On My Mind Blog

If your mark is a non-English word that consumers are likely to translate into English, the "doctrine of foreign equivalents," may cause the U.S. Patent and Trademark Office to consider your mark the same as its English counterpart.  The same applies to an English word mark that may be considered the same as its prior non-English counterpart.

There are two policies for this rule:  (1) a trademark owner should be able to use its mark in any language its customers know best; and (2) international trade should permit generic terms to be used everywhere in all languages.

This rule applies only if an appreciable number of average consumers living in the U.S. know the foreign language and are likely to translate that mark into English.  Thus, only contemporary languages are relevant, although immigration is resulting in more languages becoming familiar.  For example, Latin and Ancient Greek are considered dead or obscure languages, but Chinese, Japanese and Afrikaans are considered modern languages.

These principles have been applied in several contexts: 

Likelihood of confusion--a mark is unregistrable if it is likely to be confused with a prior mark.  (CHAT NOIR, French for "black cat," was refused registration for eau de cologne because BLACK CAT had previously been registered for perfume). 

Genericism--generic terms are unregistrable.  (CHUPA was Spanish for "lollypops" so CHUPA CHUPS was unregistable for lollypops).

Primarily merely a surname--such marks are unregistrable without proof of having become a distinctive source designation.  (FIORE was a surname, but it was also the word "flower" in Italian, so it was considered not primarily merely a surname and was registrable for bags). 

Geographic deceptive misdescriptiveness--such marks are unregistrable.  (TOSCANA means 'Tuscany" in Italian and the furniture was not from there, so the mark was considered unregistrable).  

There are some exceptions where the doctrine of foreign equivalents is not applied: 

If a non-English word has been adopted into the English language, it will not be translated.   (CORDON BLEU has a meaning in its own right, so would not be translated as BLUE RIBBON). 

If a mark combines a non-English component with an English component, it also will not be translated.  (LE CAR for automobiles would not be translated as "the car"). 

If a non-English mark is compared to an equivalent mark in another non-English language, they may or may not be considered in conflict, depending on how similar they are to each other and how likely it is that they both would be translated into English by an average consumer.  (The French mark  BEL-AIR for sauces and the Italian mark BEL ARIA for juices were not considered in conflict).  

When you are clearing a new mark, you should tell the searcher all known translations to discover any prior mark that may block your mark from being registered in the U.S.

For further information about trademarks, please contact William M. Borchard or your CLL attorney.

This ON MY MIND™ Blog post © 2015 by Cowan, Liebowitz & Latman, P.C., New York, NY. 

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