Doctrine of Foreign Equivalents

The Doctrine of Foreign Equivalents treats trademarks in different languages with the same meaning as equivalent.

The Doctrine of Foreign Equivalents, in trademark law, states that when a trademark in a different language has the same meaning as an already existing trademark, the likelihood of confusion analysis will treat the trademarks as having the same meaning and will be an important factor in the analysis. In other words, a computer start-up cannot use the name MANZANA COMPUTADORA because when it is translated into English, it means APPLE COMPUTER. The doctrine also applies to the transliteration of trademarks that consists of non-Latin letters such as Cyrillic script used in Russian or Chinese characters used in Chinese, Japanese and Korean.

Trademarks that incorporate the Russian alphabet need to be transliterated before a likelihood of analysis can be done or a trademark application can be reviewed.

In recent years, courts have clarified how the Doctrine of Foreign Equivalents should be applied in likelihood of confusion cases. Some courts applied it extremely strictly while others were less harsh. In a 2005 case, the Federal Circuit Court, a well respected court for trademark cases stated that, “When it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.” In addition they said, “the doctrine of foreign equivalents is not an absolute rule and should be viewed merely as a guideline.” No longer was a direct translation hit automatically likelihood of confusion, but a very important factor in the analysis.

The mark VEUVE ROYALE translates to ROYAL WIDOW. The court found it was not confusingly similar to THE WIDOW in part because if “it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then the doctrine of foreign equivalents will not be applied.” However, it is still a DEAD application it was likely to be confused with VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT.

In addition to courts and the Trademark Trial and Appeal Board (TTAB) using the Doctrine of Foreign Equivalents in likelihood of confusion cases, the United States Patent and Trademark Office (USPTO) applies the doctrine to trademark applications. Section 809 of the Trademark Manual of Examining Procedure states that trademark applications that include non-English words must be translated into English. If the trademark application does not give a translation of the trademark, the Examining Attorney must require the trademark applicant submit an accurate translation. The English translations of a trademark appear in records at the USPTO and on the certificate of registration.

One of the reasons why the USPTO requires the English translations of trademark applications is because they will conduct trademark searches in both the native language and for the English translation. The reason for searching the English translation too is so that a large, well known brand in English cannot be diluted by a third party using the brand in a different language, such as with the MANZANA COMPUTADORA/APPLE COMPUTER example above.

For example, in the early 1950s, as the Doctrine of Foreign Equivalents was being developed at the USPTO, someone applied for the trademark CHAT NOIR, which is French for BLACK CAT. The Examining Attorney refused registration for CHAT NOIR because there already was a trademark registration for BLACK CAT for related goods.

The above example is a case where an exact translation was easy, but sometimes, as the saying goes, things get lost in translation. An example of this occured when the TTAB was trying to decide the proper translation for MAIS OUI, which is literally translated into “but yes.” However, language experts stated a more accurate translation of the phrase would be “why, certainly” or “why, of course.” The TTAB went on to state that a satisfactory translation must be the normal English expression that is the equivalent of the original term. In this case MAIS OUI was best translated to mean “why, certainly” or “why, of course.”

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