The Trademark Doctrine of Foreign Equivalents

How does the USPTO treat trademarks that include a foreign language term? Would a person be able to sneak a generic term into a US trademark registration by merely translating the generic term into a foreign language? What if the English translation of a foreign-language term is confusingly similar to another trademark registration? These questions are answered by reviewing the Doctrine of Foreign Equivalents. What is the Doctrine of Foreign Equivalents and when does it apply?

The Doctrine of Foreign Equivalents

The Doctrine of Foreign Equivalents (the “DoFE”) is part of trademark law. It applies to trademarks that have a term in a foreign language. Essentially, the DoFE says that marks that include foreign-language terms should be translated into English for the purpose of determining if the trademark application should be allowed or refused.

Thus, a foreign-language translation of a generic English word is likewise generic and should be refused. Also, if the translated meaning of a foreign-language mark is sufficiently similar to another registration that confusion is likely to result, then the application should be refused. However, there are limits to the DoFE.

The DoFE was applied in these examples:

  • MARAZUL (which translates to “blue sea”) is likely to cause confusion with a previous mark for BLUE SEA for similar goods.
  • LA PEREGRINA (which translates to “the pilgrim”) is likely to cause confusion with a previous mark for PILGRIM for similar goods.
  • SAPORITO (which translates to “tasty”) is merely descriptive because it describes a characteristic of the product.

Limits to the Doctrine of Foreign Equivalents

Courts have decided that the DoFE applies only when it is likely that “the ordinary American purchaser would stop and translate [the term] into its English equivalent.” A key requirement is that the translation must be literal and direct, with no other relevant meanings or shades of meaning.

Because of the “stop and translate” requirement of the Doctrine of Foreign Equivalents, dead or obscure languages may not be subject to the DoFE. The DoFE only applies to languages that are common and modern. Whether a particular language is common enough to trigger the DoFE is determined on a case-by-case basis.

If you want to include a foreign-language term in your trademark, be sure to use terms that are not literal translations of English-equivalent generic terms or that have a similar meaning to other trademark registrations.

Overcoming a Refusal Based on the Doctrine of Foreign Equivalents

If you receive a refusal because the examiner relied on an English translation of your trademark, you can try to argue that the DoFE does not apply because there are other relevant connotations or variations in meaning for the foreign-language term. (Remember, the translation must be literal and direct for the DoFE to factor in.)

For example, in one case, a mark for DOVE was not likely to cause confusion with PALOMA for similar goods because the Spanish word “paloma” and the English word “dove” are not exact synonyms: “paloma” translates into either “dove” or “pigeon.” This difference in meaning was enough that the DoFE did not apply.