Selecting a name for your product, service, or company is a difficult process. You want to send the right message and convey an intangible aspect of your business to potential consumers. You want the name to reflect your corporate values and mission. And you want to be creative and stand out. Many times businesses look to words from a foreign language to achieve these goals. But that decision can have disastrous effects on your ability to trademark your name due to the doctrine of foreign equivalents.
In short, the doctrine is that a foreign word will be translated into English for an analysis of genericness, descriptiveness, and similarity of meaning and connotation to determine if the foreign word is confusingly similar to an existing trademark. The doctrine is applied when it is likely that “the ordinary American purchaser would stop and translate the foreign term into its English equivalent.” In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).
For example, a jewelry company attempted to register LA PEREGRINA, which is Spanish for THE PILGRIM. At the time of the attempted registration of LA PEREGRINA, another jewelry company already registered THE PILGRIM in association with certain types of jewelry. As a result, the examining attorney refused to register LA PEREGRINA because it would create a likelihood of confusion with its English equivalent: THE PILGRIM. In re La Peregrina Limited, 86 USPQ2d 1645, 2008 WL 695794 (TTAB 2008).
While the doctrine of foreign equivalents can act as a barrier to registration, the doctrine is not intended to be applied in a rigid formula, but instead, is a guideline. If your mark has been refused on this ground, you must respond to the office action arguing that consumers are unlikely to translate the term to English, but instead, will leave the term “as is.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1172, 396 F.3d 1369 (Fed. Cir. 2005). Factors that could lead to this conclusion vary greatly depending on the facts, but could include the meaning and connotation behind the foreign word.
Further, the doctrine of foreign equivalents is but one of the many factors applied in any likelihood of confusion test. Applicants facing an office action would be wise to draw distinctions based on the comparative marks’ sight, sound, overall commercial impression, and the similarity of the underlying goods and services.
When researching your corporate name, businesses should search relevant databases to determine if the English equivalent poses a risk to trademark registration. If you are unsure whether your proposed trademark will fall into this category, you should seek legal advice before sinking money into building a brand based on that term.
The doctrine of foreign equivalents does not apply automatically to every word borrowed from a foreign language. The USPTO examining attorney must first determine whether “the ordinary American purchaser” would stop and translate the foreign word into its English equivalent. This inquiry depends on whether the relevant American consuming public is likely to be familiar with the foreign language in question.
For widely spoken languages with large numbers of American speakers — Spanish, French, German, Italian, Portuguese, and Chinese prominent among them — the doctrine is more likely to be applied. For less commonly known languages, the USPTO has more frequently declined to apply the doctrine on the ground that American consumers would not translate the term. The TTAB has noted that Spanish, as the second most widely spoken language in the United States, is the language for which the doctrine is most consistently applied.
Even for commonly spoken languages, the doctrine is not applied mechanically. The USPTO considers the specific context in which the mark is used, the nature of the goods or services, and whether the foreign word has acquired a secondary meaning distinct from its literal translation. A mark like CORONA for beer has coexisted with other marks despite having a literal Spanish translation (crown) because the word has taken on a distinct commercial identity in the American marketplace.
The doctrine of foreign equivalents applies not only to likelihood of confusion refusals but also to descriptiveness refusals under Section 2(e)(1) of the Lanham Act. If a foreign word translates to a descriptive English term for the goods or services in the application, the USPTO will refuse registration on descriptiveness grounds.
For example, a company selling baked goods that sought to register the Italian word FRESCO, meaning fresh, would face a descriptiveness refusal because “fresh” directly describes a desirable characteristic of baked goods. Similarly, a coffee company seeking to register the Spanish word NEGRO, meaning black, for coffee products would likely face a descriptiveness refusal because “black” describes a characteristic of coffee.
Applicants who receive descriptiveness refusals based on the doctrine of foreign equivalents can respond by arguing that the foreign term has a distinct commercial identity that American consumers would not translate, that the mark has acquired distinctiveness through long and exclusive use (secondary meaning), or that the mark should be approved for registration on the Supplemental Register as a first step toward eventual Principal Register registration.
If you receive an office action refusing your trademark application based on the doctrine of foreign equivalents, several response strategies are available depending on the ground for the refusal:
The safest approach is to evaluate the registrability of any foreign-language mark before investing in brand development. A qualified trademark attorney can conduct a clearance search that covers not only the foreign-language term itself but also its English equivalent and any phonetically similar English-language marks. This two-level search is essential for any mark drawn from a foreign language.
If clearance indicates a significant risk of a descriptiveness or likelihood of confusion refusal based on the doctrine of foreign equivalents, there are several alternatives: select a different foreign-language term, modify the mark to make it inherently distinctive, combine the foreign-language term with other distinctive elements, or explore whether the mark is registrable in combination with design elements as a composite mark.
Revision Legal’s trademark attorneys advise businesses on all aspects of trademark selection and clearance, including the application of the doctrine of foreign equivalents to specific marks. Contact us today at 855-473-8474 or through our website to discuss your trademark needs before you commit to a brand name.
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