Trademarks consisting of or including foreign words or terms from common, modern languages are translated into English to determine genericness, descriptiveness, likelihood of confusion, and other similar issues. With respect to likelihood of confusion, it is well established that foreign words or terms are not entitled to be a registered trademark if the English language equivalent has been previously used on or registered for products which might reasonably be assumed to come from the same source.
Foreign Generic Terms and the Doctrine of Foreign Equivalents
The doctrine of foreign equivalents applies in two ways. First, foreign words that translate to generic or merely descriptive English words may not receive trademark protection where a consumer in the United States would recognize the generic or descriptive meaning of the word. For example, a trademark applicant will not receive legal protection for the word trademark “Pommes Frites” if the trademark applicant uses the trademark to promote the sale of french fries. Second, foreign words may be confusingly similar where ordinary U.S. consumers speak the foreign language and have familiarity with the words. For example, if a competitor uses the trademark “French Fries” to sell dog toys, a trademark applicant could not use the word “Pommes Frites” to sell dog toys because it would be confusingly similar.
Under this doctrine, the trademark examining attorney will translate the foreign word into English to determine the genericness and descriptiveness, determine the similarity of meaning, and determine if the terms are confusingly similar to English word trademarks. The doctrine, however, is not an absolute rule and simply a guideline that applies only when the ordinary American consumer would likely stop and translate the foreign word into English. An applicant may argue that the modern foreign language in question is not commonly spoken in the U.S. and the examining attorney may then provide evidence of the percentage of consumers in the U.S that speak the language. Even if the percentage is small, however, an examining attorney is likely to determine that it is not an obscure language. Case law shows that presenting the argument to prove that an average American consumer does not speak a certain language will likely fail. In cases where this evidence is not conclusive, an examining attorney may look at other evidence; for example, whether the foreign countries where that language is spoken are prominent trading partners with the U.S.
English Translations – Literal and Direct
If the English translation of a word trademark is literal and direct, and there is no evidence to the contrary showing other relevant meanings, an examining attorney should apply the doctrine. Evidence of the English translation of the foreign word may come from foreign dictionaries, the Internet, or Legal databases. The doctrine would not be applied when the evidence shows that the foreign word has different variations when translated into English, and that the foreign word may not have a literal and direct translation.
Confusingly Similar – Context and Accompanying Features
Whether a word trademark is confusingly similar to an English word is also determined by the context in which the word appears and its accompanying features. For example, the Spanish word MONARCA accompanied with a crown design would likely be translated into the English word MONARCH. An examining attorney or a court may also look to common foreign slang terms or slight variations in spelling to determine whether word trademarks have generic characteristics. The marketing environment as used in connection with the goods and/or services is also considered when determining if a foreign expression is likely to be translated into English. Instead of arguing that the typical American purchaser does not speak the foreign language, an applicant may argue that the foreign word trademark is uncommon and rarely used even by those that speak the language. It is important to look at the context in which the word is used and determine whether a consumer would simply accept the trademark as it is without translating it.