Yes, as long as the proposed trademark meets the other requirements for registration. U.S. trademark laws do not require that only the English language can be used for trademarks. However, whatever the language, trademarks must meet the legal requirements, including functionality, distinctiveness, uniqueness, etc. For example, every trademark must function as a trademark in that the word, phrase, mark, or logo identifies a unique commercial source for some product or service in the minds of consumers. As an example, TIFFANY and its trademarked blue color identify a unique commercial source for amazing and high-quality jewelry. Thus, a trademark that is a foreign word or phrase must function in the same manner.

There are several famous U.S. trademarks that use foreign words, including VEUVE CLICQUO,T which is a brand of champagne sold by one of the world’s largest champagne businesses. The owner of the brand has sold Veuve Clicquot champagne in the U.S. for decades, if not longer.

There are a couple of extra steps that are needed when applying for trademark registrations when foreign words or phrases are involved.

First, generally speaking, the applicant will need to provide a translation of the foreign word/phrase as part of the application.

Second, the applicant needs to be aware of the Doctrine of Foreign Equivalents. As noted above, trademarks must be distinctive. Among other things, this means that trademarks that are merely descriptive are generally rejected by the Trademark Office. An example might be TASTY FOOD as a trademark for a restaurant. This proposed trademark will be rejected because the trademark is just descriptive of what is being sold.

The Doctrine of Foreign Equivalents applies the same rule to foreign words and phrases. Thus, any foreign translation of “tasty food” would also be rejected because, in the foreign language, the words are just a description of the product or service. Thus, in the past, the Trademark Office rejected a trademark application for FAMILIA DENTAL because it was merely a French language translation of the words “family dental.”

The Doctrine also applies to questions of whether the proposed trademark is “confusingly similar” to an existing trademark. The foreign language word/phrase will be translated into English and compared to existing English trademarks. If there is a confusing similarity, the proposed foreign language trademark will be rejected.

Third, along the same lines, trademarks cannot be registered if they are generic words/phrases that identify a type of product in an industry or market. ZIPPER is a famous example of a fastening product that was once trademarked but became the generic word used by consumers for a type of fastener. Eventually, ZIPPER lost its trademark registration. The same rule will apply to a word or phrase in a foreign language.

Fourth, commonly used words, phrases, and symbols cannot be registered as trademarks. This rule will apply to commonly used words and phrases in the foreign language, too.

Aside from these legal issues, cultural issues should be addressed when considering words or phrases in a foreign language. Are there possible misinterpretations, offensive meanings, or slang uses that might have unintended negative impacts on the trademark?

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How the USPTO Evaluates Foreign Language Trademark Applications

When an application to register a foreign language trademark is received, the USPTO examining attorney performs a multi-step analysis. The examiner first identifies the language, then consults dictionaries and translation databases to determine the English equivalent. If no reliable translation exists — for example, if the word is a coined or invented term in the foreign language — the Doctrine of Foreign Equivalents typically does not apply.

Courts have held that the Doctrine applies when the foreign word comes from a “common, modern language” and its meaning would be “readily understood” by an appreciable segment of American consumers. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369 (Fed. Cir. 2005). If an American consumer is unlikely to stop and translate the foreign word, the Doctrine may not apply, and the mark may be analyzed on its face.

Famous Examples of Registered Foreign Language Trademarks

Many of the world’s most recognized brands are built on foreign language words:

• VOLKSWAGEN (German for “people’s car”) — registered and protected as a distinctive mark through decades of commercial use and acquired secondary meaning
• HÄAGEN-DAZS — a coined term designed to sound Scandinavian; because it has no actual translation, the Doctrine of Foreign Equivalents does not apply
• FAGE (Greek for “eat”) — the Federal Circuit held that FAGE was not merely descriptive of yogurt because “eat” is not descriptive of Greek yogurt in the minds of ordinary American consumers
• MONTBLANC (French for “white mountain”) — registered despite geographic significance; the mark acquired strong secondary meaning through decades of use

These examples show that the Doctrine is a fact-intensive inquiry. Even if a word translates to a potentially descriptive English term, registration may still be possible if the mark has acquired distinctiveness through long and continuous commercial use.

Translation Requirements and Accuracy

USPTO rules require trademark applications for marks containing non-English words to include an accurate English translation. See 37 C.F.R. § 2.32(a)(9). The USPTO cross-checks translations, and has rejected applications where applicants submitted inaccurate or misleading translations to avoid a likelihood-of-confusion or descriptiveness refusal. If the foreign word is a surname in the relevant language, the USPTO will also evaluate whether the mark is “primarily merely a surname” under 15 U.S.C. § 1052(e)(4) — a separate ground for refusal that applies regardless of language.

Confusing Similarity with Existing Marks

The Doctrine of Foreign Equivalents cuts both ways. If a competitor has already registered a foreign language trademark, your proposed English-language mark may be refused if it translates to the same concept. Conversely, a prior English-language registration may bar your foreign language application.

The USPTO’s likelihood-of-confusion analysis under In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), evaluates 13 factors. When foreign language equivalents are involved, this analysis requires an attorney who understands both trademark law and the linguistic relationship between the marks.

Practical Steps Before Filing

Before filing a foreign language trademark application, trademark counsel should:

• Commission a comprehensive clearance search covering both the foreign language mark and its English translation
• Research whether the translation is descriptive, generic, or offensive under any applicable legal standard
• Confirm that the mark functions as a source identifier — not merely an ornamental or decorative element
• Consider filing on an intent-to-use basis under 15 U.S.C. § 1051(b) if commercial use in the U.S. has not yet begun
• Evaluate international filing strategy under the Madrid Protocol if global brand protection is a goal

Contact the Attorneys at Revision Legal

If you have questions or need legal advice, contact the experienced attorneys at Revision Legal. Our team handles trademark registration matters for businesses and individuals nationwide. Call us at (855) 473-8474 or use the contact form on our website.