THE DAILY RECORD
Tuesday, August 18, 2015
WESTERN NEW YORK’S SOURCE FOR LAW, REAL ESTATE, FINANCE AND GENERAL INTELLIGENCE SINCE 1908
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Foreign words as trademarks
In some situations, the use of choice foreign words perfectly No exclusivity for generic terms
Just as generic English terms cannot function as a trademark
captures that certain air of … je ne sais quoi. To convey such
elusive quality or connotation as a source identifier, trademarks or be registered, USPTO will not recognize or grant registration
of a foreign word or words from a well-known modern language
having foreign terms may be appealing.
that is a generic name of a product. For example,
There are numerous registrations of marks having or
FRUTTA FRESCA was considered generic for fresh
composed of foreign words on the Principal Register
fruit and thus could not be registered. No one can be
with United States Patent and Trademark Office, such
granted the exclusive use of the generic, plain name of
as: BEAU MONDE for seasonings and spices, where
a product or particular services, either in English or its
“beau monde” means “beautiful world” in French;
equivalent in any foreign language. A foreign term will
OBJECTO for audio speakers, where “objecto” means
generally not be labeled “generic” unless a significant
“object” in Spanish; and stylized LANGMEIL for
portion of American consumers familiar with the parwine, where “langmeil” means “the long mile” in Gerticular foreign language recognizes it as the name of a
man.
product or services, regardless of the language used.
Before adopting a foreign word or phrase as a tradeDescriptiveness based on English translation
mark, and before investing much resources in marketSimilarly, the USPTO will not register as a tradeing, it is prudent to consider whether the proposed By CAROLINE
mark
a foreign word or words from a well-known modmark will be eligible for and successful in obtaining B. AHN
ern language that is merely descriptive of the goods or
registration with the USPTO, as well as assessing Daily Record
services or of a feature, characteristic or quality of the
whether such use will potentially be in conflict with Columnist
goods and/or services. The descriptiveness of the foranother’s established rights.
eign word will be determined according to its English translaDoctrine of foreign equivalents
When seeking to register a foreign word or phrase as a trademark, the applicant should be aware of the applicability of the
doctrine of foreign equivalents in the examination of the trademark application.
“Under the doctrine of foreign equivalents, foreign words from
common languages are translated into English to determine
genericness, descriptiveness, as well as similarity of connotation
in order to ascertain confusing similarity with English word
marks,” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005).
Examples of common foreign languages include French, German, Italian, Chinese, Spanish, Russian and Japanese. Whether
the doctrine of foreign equivalents will be applied during examination of the trademark application depends on the significance
of the foreign term(s) in the mark to the relevant consumers.
tion, even where the foreign word may be meaningless to the general public because such foreign word has not been adopted into
the English language.
For example, the application to register the stylized mark
SADORU was refused on the ground that the mark is merely
descriptive of the identified goods, i.e. motorcycle seats and
ergonomic motorcycle pads for use with seats. The term “sadoru”
is a Japanese word for “saddle,” without another relevant meaning. In another example, the application for LAPELLE for
leather for furniture was also refused as being merely descriptive, where “la” is an Italian article meaning “the” and “pelle”
means “leather” in Italian.
Likelihood of confusion
Additionally, a trademark will not be registered if it is confusingly similar to other marks. In this regard, the doctrine of for-
Reprinted with permission of The Daily Record ©2015
Continued ...
THE DAILY RECORD
Tuesday, August 18, 2015
WESTERN NEW YORK’S SOURCE FOR LAW, REAL ESTATE, FINANCE AND GENERAL INTELLIGENCE SINCE 1908
Continued ...
eign equivalents will be applied when the ordinary American
purchaser would “stop and translate” the foreign terms in a mark
into its English equivalent. If the English translation is exact, literal or direct, without any other relevant meaning or connotation,
then the doctrine will typically apply.
Further, as with non-foreign term marks, in making the determination of registrability, the USPTO will consider a number of
factors, including: (1) similarity of the marks in their entireties
in appearance, sound connotation and commercial impressions;
(2) similarity of the goods/services with which the marks are
used; and (3) the similarity of the channels of trade in which the
goods/services are sold.
For example, the application to register the mark LA PEREGRINA relating to jewelry and loose stones was refused for likelihood of confusion in view of the registered mark PILGRIM for
jewelry and brooches and hair clips. The exact translation of the
Spanish word “la peregrina” is “the pilgrim.” Despite the differences in appearance and pronunciation, the LA PEREGRINA
and PILGRIM were considered foreign equivalents and thus, the
marks were identical in meaning.
Other examples of refusals for likelihood of confusion include:
the applied for mark MARAZUL for fish and seafood products in
view of the registered mark BLUE SEA for non-live fish and
frozen fish, where uncontradicted evidence demonstrated that
“mar azul” means “blue sea” in Spanish; and the applied for
mark CENTURY for wine in view of the registered mark SECOLO for table wine, where SECOLO is an Italian word for “century.”
Recently, the TTAB reversed the refusal to register the mark
THE PERFECT FACE relating to body and beauty care cosmetics and skin care products. The trademark examining attorney
had refused to register the mark for likelihood of confusion with
the registered mark PARFAIT VISAGE for “pharmaceutical
preparations in the form of topical ointments, namely, skin moisturizers and skin cleansers; skin cell growth stimulators; antivirals; antibacterial, and antifungal agents, namely, pharmaceuticals, natural oils, vitamins, minerals and hand washes.”
In this case, the TTAB concluded that the French words
“PARFAIT VISAGE” was not an exact translation of “PERFECT
FACE” because the more appropriate translation would be “le
visage parfait.” Thus, in view of the differences in sound and
appearance, without sufficient similarity in the connotations of
the marks, TTAB did not find the marks to project similar overall commercial impressions and did not find likelihood of confusion.
Conclusion
As the doctrine of foreign equivalents is a guideline and not an
absolute rule, the conclusions and holdings resulting from the
application may be varied. Nonetheless, there are steps that can
be taken to minimize risk and increase the chances of successfully registering a trademark having foreign terms. For example,
when conducting a preliminary clearance of a proposed foreign
word mark, a search for the foreign term as well as the English
translation should be performed. One may also look to non-modern foreign languages, such as Latin, when selecting a foreign
word mark.
Caroline B. Ahn is an associate with the intellectual property
law firm of Heslin Rothenberg Farley & Mesiti PC. She can be
reached at (518) 452-5600, or via email to [email protected].
Reprinted with permission of The Daily Record ©2015