Understanding the Doctrine of Foreign Equivalents in Trademark Law: Know How to Navigate Office Action Rejections

The Doctrine of Foreign Equivalents in U.S. trademark law, occasionally rears its head as an Office Action rejection during the prosecution of a trademark application. In this article, we will discuss what the Doctrine of Foreign Equivalents is and how it is applied by the United States Patent and Trademark Office, including methods for addressing an Office Action rejection citing this doctrine.

What is the Doctrine of Foreign Equivalents?

Under the Doctrine of Foreign Equivalents, the Courts and the USPTO translates in English the foreign words of a trademark to identify their meaning and potential conflicts with existing trademarks. The USPTO examines an English equivalent of foreign terms to ensure they are not descriptive, generic, or confusingly similar to other marks.

How the Doctrine is Applied in Trademark Examination

In the course of examination of a trademark application, the USPTO will apply the Doctrine of Foreign Equivalents to determine whether a foreign language mark would be confusingly similar to a registered English language mark, or whether the mark is descriptive or generic in English. The typical office action rejections citing the Doctrine of Foreign Equivalents may include one or more of the following grounds:

1. Likelihood of Confusion: The USPTO may refuse a foreign-language trademark where its English equivalent is likely to be confused with an existing mark. For example, In re California Faucets, Inc., 2018 TTAB LEXIS 463 (T.T.A.B. 2018) (not precedential), the Board held that SEAGULL for water purifiers was confusingly similar to GAVIOTA (Spanish translation of “seagull” for showerheads and faucets).
2. Descriptive or Generic Terms: Where the foreign word directly translates into a descriptive or generic term in English, it can be rejected on such grounds. An example of a generic term that refused registration was KUHLBRAU given its German translation to “cool brew” and thus generic as to beer. See In re Jos. Schlitz Brewing Co., 223 U.S.P.Q. 45 (T.T.A.B. 1983). Similarly, the TTAB held YAMSAFER as the transliteration of “traveler from Arabic and therefore merely descriptive travel agency services. See Almosafer Travel & Tourism Co. v. Yamsafer Inc., 2018 TTAB LEXIS 446 (T.T.A.B. 2018) (not precedential). The doctrine has even applied to laudatory terms to prevent registration. The TTAB, In re Geo. A. Hormel & Co., 227 U.S.P.Q. 813 (T.T.A.B. 1985), upheld refusal of the mark SAPORITO for dry sausage as it translated to “tasty” in Italian.
3. Misleading or Deceptive Marks: The trademark may be refused if the translation of the foreign word is misleading about the nature or quality of the goods or services. This is commonly seen in instances of primarily geographically deceptively misdescriptive rejections. The TTAB upheld the refusal to register MOSKOVSKAYA for vodka on the ground that it was primarily geographically deceptively misdescriptive, given that that the mark translated to “of or from Moscow” in Russian, but the vodka has no connection to Moscow. See In re Spirits Int’l N.V., 86 USPQ2d 1078 (TTAB 2008) [precedential], vacated and remanded, Appeal No. 08-1369 (Fed. Cir. April 29, 2009) [precedential]. A key consideration for this analysis is whether a considerable number of all relevant consumers would be deceived.

Strategies to Overcome Rejections

If your mark faces an office action rejection based on the Doctrine of Foreign Equivalents, consider the following:

1. Argue Against Direct Translation: Demonstrate that the foreign term has no direct or generally recognized English equivalent.
2. Non-Recognized Term Evidence: Present proof that the foreign word is not recognized by the relevant consumer group, therefore reducing a likelihood of confusion or misdescriptive issue. For example, in the MOSKOVSKAYA appeal, the mark holder argued that the relevant consumers in the US are not just those that spoke Russian, but whether a substantial portion of the audience, not just Russian speakers, would be deceived.
3. Secondary Meaning: Establish that the mark has acquired distinctiveness or secondary meaning in the marketplace, and is hence registrable despite the translation.

The doctrine of Foreign Equivalents is sometimes overlooked during the clearance portion of selecting a mark. Following a trademark search, the doctrine of foreign equivalents may be a consideration for certain marks. Further, whether the applied for mark has an English translation or not, should be determined in advance and properly entered into the initial application or early on during prosecution, as it could influence the examination or possibly become an issue if the mark is later contested.

For professional assistance in overcoming office action rejections, do not hesitate to contact our office: Cohen IP Law Group for ensuring that your foreign language issue of your trademark properly assessed.