Trademarking Foreign Words: An Introduction to the Doctrine of Foreign Equivalents

Foreign words can be registered as trademarks in the United States. However, those who are considering using a foreign word trademark should be aware of the doctrine of foreign equivalents when choosing their mark. 

Under the doctrine of foreign equivalents, applications to register trademarks in foreign languages that are “familiar to an appreciable segment of American consumers” (like French or Spanish) must be translated into their English equivalent.  As a result, even though the majority of Americans may not speak the foreign language at issue (and thus wouldn’t be confused by a word in that language), the doctrine nevertheless requires that the word be translated when conducting an analysis of the mark.  The doctrine of foreign equivalents does not apply to marks in obscure or dead languages.

 After translating the mark into English, the USPTO conducts an analysis of whether the translation of the proposed mark is generic and/or descriptive and/or or creates a likelihood of confusion with another registered mark. 

 For example, if one were to apply to register the French language mark “Eau Claire,” the examining attorney at the USPTO would also consider the English translation of the mark—“Clear Water”—when conducting their review.  If the goods on which the “Eau Claire” mark is used are bottled clear water, the USPTO would deny the mark’s registration on the basis that the mark is generic and descriptive (just as it would on an application for the mark “Clear Water” for bottled water).  Similarly, if the mark “Clear Water” was already registered for another good—say, for a fragrance—the registration of “Eau Claire” for a fragrance would be barred due to likelihood of confusion with the registered mark, despite the fact that it is in a foreign language.  As another example, since Honda already owns the trademark for “odyssey” for vans, you’d be unlikely to get an application approved for a van called the “odisea” (the Spanish translation).  

In many cases, application of the doctrine is not straightforward—what if, for example, the translation is similar but not exact, or what if the mark will be used to identify similar but not identical goods? As a result, it’s a good idea to consult with an IP attorney if you have questions.  Our firm regularly advises on trademark issues.  Feel free to contact us if we can be of help.