New York Trademark Attorney Blog
In this precedential case of the United States Court of Appeals for the Federal Circuit (“CAFC”), the Trademark Trial and Appeal Board’s decision to refuse a foreign word trademark as generic was affirmed. Under the doctrine of foreign equivalents, a trademark applicant seeking to register a mark that includes non-English wording will need to include an English translation of that wording. 37 C.F.R. §2.32(a)(9). Moreover, this doctrine holds that foreign words from common languages such as French must be translated into English to determine genericness and descriptiveness. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001); In re Am. Fertility Soc’y, 188 F.3d 1341, 1346 (Fed. Cir. 1999). There was substantial evidence in the record supporting the Board’s conclusion that French was a common language. The Board based its findings on the fact that as of 2010, French (including all French dialects) was the fourth most common language spoken in the United States and 2.1 million Americans over the age of five spoke French at home.
The CAFC held that a party opposing a translation of a term under the doctrine of foreign equivalents has the burden to show that it is unlikely that the average American consumer would translate the word to English. Applicant was seeking to register the term Vetements in standard characters and in a stylized form for clothing goods and for related retail store services featuring clothing. The subject trademark, Vêtements is a term in French that directly translates into English to mean clothing. There was no dispute in this case that the English translation of Vetements was clothing. The Appellant was instead arguing that the ordinary American consumer would not stop and translate the mark to English. Appellant argued that “likely” to stop and translate meant that there was a requirement of a fifty percent population threshold that would translate, but cited no authority for this proposition.
The doctrine will be applied if an ordinary American consumer is likely to stop and translate the foreign word into English. Here, Applicant was a Paris based fashion company, and this is relevant to explain why it was likely that American purchasers would stop and translate Vetements into the English word clothing. “The “ordinary American purchaser” in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language. The CAFC affirmed the Board’s decision finding Vetements generic for clothing. It concluded that the Appellant/Applicant did not meet its burden to show why the term Vetements would not be translated. See In re Vetements Group, 2025 USPQ2d 775 (Fed. Cir. May 21, 2025) [precedential].
Whether an examining attorney should apply the doctrine of foreign equivalents turns upon the significance of the foreign mark to the relevant purchasers, which is based on an analysis of the evidence of record, including, for example, dictionary, Internet, and LexisNexis® evidence. See TMEP 1207.01(b)(vi). If the evidence shows that the relevant English translation is literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists, the doctrine generally should be applied by the examining attorney. When determining the appropriate English translation of the foreign wording in the mark, an examining attorney should view the translations in the context of any significant features in the mark, such as design or wording elements, the identified goods and/or services in the application, the relevant marketplace, and the specimen. Here, the Court pointed out that the word in question was a simple common term, clothing. This is another factor to consider when determining if the ordinary American purchaser will stop and translate.
In conclusion, the foreign equivalent of a generic English word is no more registrable than the English word itself. For more on this topic, see the firm’s web page entitled, The Trademark Doctrine of Foreign Equivalents. See also, the firm’s blog post entitled, The Doctrine Of Foreign Equivalents Is Alive And Well, for a case involving this doctrine and a likelihood of confusion refusal. If you have questions regarding the doctrine of foreign equivalents, or other trademark related inquiries do not hesitate to contact the firm for a courtesy consultation.