The doctrine of foreign equivalents represents one of the more nuanced areas of trademark law, sitting at the intersection of linguistic analysis, consumer perception, and legal precedent. This doctrine can make or break trademark applications containing foreign-language terms, making it essential for both practitioners and consumers alike to understand both its theoretical foundations and Federal Circuit case law.
The doctrine of foreign equivalents is a legal principle that treats foreign words in trademark applications as equivalent to their English translations when determining registrability. Under this doctrine, if a foreign word translates to a term that would be considered generic or merely descriptive of the goods or services in question, the foreign term itself is presumed to have the same legal significance as its English equivalent.
The foundational premise is straightforward: trademark law should not permit applicants to circumvent the prohibition against registering generic or merely descriptive terms simply by using a foreign-language equivalent. The USPTO’s Trademark Manual of Examining Procedure (TMEP) codifies this principle, requiring examining attorneys to consider whether a significant portion of the relevant purchasing public would understand the foreign term’s meaning.1
Key Elements
Consumer Perception of Foreign Term: The critical inquiry focuses on whether the relevant American purchasing public would understand the foreign term’s meaning. Generally, if a foreign term is recognizable by U.S. consumers, the English-language equivalent may be deemed confusingly similar, giving rise to a Section 2(d) refusal against a pending application.2 Additionally, if the foreign equivalent is otherwise merely descriptive of a feature, characteristic, element, or aspect of the goods or services, the mark will be subject to a Section 2(e)(1) refusal.3
“Stop and Translate” Analysis: The USPTO examine the specific consumer base for the goods or services at issue. The examination queries whether the ordinary American purchaser would “stop and translate” the foreign term into English. If the term is exact, literal and direct, a Section 2(d) refusal is maintained and registration is refused. For specialized products marketed to particular ethnic communities or educated consumers, a smaller segment of the population understanding the foreign term may be sufficient to trigger the doctrine.4
Federal Circuit Jurisprudence
The Court of Appeals for the Federal Circuit’s treatment of TTAB decisions involving the doctrine of foreign equivalents reveals the complexity and fact-specific nature of these determinations. Several landmark cases illustrate how appellate review has shaped the doctrine’s application.
In In re Spirits International, N.V.,5 the Federal Circuit found the TTAB had incorrectly applied the doctrine of foreign equivalents. The case involved the mark “MOSKOVSKAYA” for vodka, which the TTAB had found merely descriptive as the Russian equivalent of “of or from Moscow.” The Federal Circuit reversed, holding that the Board had failed to establish that American consumers would understand the Russian term’s meaning, emphasizing that the doctrine requires evidence of actual consumer understanding rather than mere translation. This decision established important precedent regarding the evidentiary burden for applying the doctrine. The court emphasized that dictionary translations alone are insufficient; there must be evidence that the relevant consuming public actually understands the foreign term’s meaning. This ruling significantly raised the bar for USPTO examining attorneys and TTAB judges seeking to refuse registration based on foreign equivalents.
In Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,6 involved opposition proceedings where the TTAB had applied the doctrine of foreign equivalents too broadly. The Federal Circuit’s reversal emphasized that the doctrine should not be applied mechanically but requires careful consideration of the specific consumer base and the level of understanding within that group.
In In re Vetements Group AG,7 the Federal Circuit affirmed the TTAB ruling that VETEMENTS, or “clothing” in French, was merely descriptive or generic, for a variety of clothing goods in Class 25. The Federal Circuit noted that TTAB’s finding that the “ordinary American purchaser would stop and translate the [VETEMENTS] marks is consistent with the doctrine [of foreign equivalents].”
Takeaways
The evolution of Federal Circuit jurisprudence regarding the doctrine of foreign equivalents has created several important practice considerations for trademark attorneys and their clients.
- Strategic Application Considerations: Applicants seeking to register foreign-language marks should carefully analyze the relevant consumer base and prepare evidence demonstrating limited consumer understanding of the foreign term’s meaning. This might include market research, surveys, or expert testimony regarding the term’s obscurity or specialized nature.
- Prosecution Strategies: When facing rejections based on foreign equivalents, practitioners should focus on challenging the examining attorney’s evidence of consumer understanding rather than merely disputing the translation’s accuracy. Successful responses often emphasize the limited nature of consumer understanding within the relevant market.
- Opposition and Cancellation Proceedings: In inter partes proceedings, parties should prepare comprehensive evidence regarding consumer understanding, including demographic analysis of the relevant purchasing public and evidence of how the mark functions in commerce.
Conclusion
For any business, American culture incorporates many foreign-language based words into the common vernacular, and understanding the doctrine of foreign equivalents is a critical consideration when filing a new trademark application. For more information on the doctrine of foreign equivalents, trademark law, or intellectual property, please contact Yonaxis I.P. Law Group.
- TMEP 1210.10. ↩︎
- TMEP 1207.01(b)(vi). ↩︎
- TMEP 1209.03(g); See also In re Sweet Victory, Inc., 228 USPQ 959, 961 (TTAB 1986) (TTAB holding GLACÉ LITE not merely descriptive for ice creams, sherbets, or frozen yogurts); but see In re Sadoru Group, Ltd., 105 USPQ2d 1484 (TTAB 2012) (TTAB holding SADORU, or “saddle” in Japanese, merely descriptive for motorcycle seats). ↩︎
- TMEP 1207.01(b)(vi)(B). ↩︎
- 563 F.3d 1347, 90 USPQ2d 1498 (Fed. Cir. 2009). ↩︎
- 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). ↩︎
- ___F.4th___, 2023-2050, 2023-2051 (Fed. Cir. May 21, 2025). ↩︎