The Doctrine of Foreign Equivalents: What It Means for Your Brand

You came up with a clever brand name in a foreign language—great! But did you know it might be refused by the USPTO? In this episode of The Briefing, Scott Hervey and Richard Buckley break down what a doctrine is, how trademark examiners apply it, and other important considerations for choosing foreign-language marks.

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Show Notes:

Scott: You’ve come up with a great brand. It’s clever, it’s catchy, and it’s in a foreign language. But when you file for a trademark, the USPTO refuses your application. Why? Well, the answer might lie in an obscure but important rule, the doctrine of foreign equivalence. I’m Scott Hervey, a partner with a law firm of Weintraub Tobin, and I’m joined today by my partner Richard Buckley. We are going to unpack the doctrine of foreign equivalence, how it works, when it applies, and what it means for brand owners and their lawyers on today’s installment of the briefing. Richard, welcome back to The Briefing.

Richard: Great to be here, Scott. Great topic.

Scott: Yeah, I was reminded of this when I was looking at a trademark search for a client, and it happened to be for a consumer brand, and their mark was in Italian. In clearing the brand, I had to think, Okay, what does that word mean? I had to look for that English language word for similar products. I’m jumping ahead of myself, though. Let’s start with the basics. The doctrine of foreign equivalence is a rule in US trademark law used to analyze trademarks that contain foreign words. Under this doctrine, a foreign word used in a trademark mark may be translated into English to determine whether the mark is generic or merely descriptive, and whether it’s confusingly similar to another registered or pending mark.

Richard: The doctrine reflects the idea that the average American consumer familiar with the foreign language may translate the word when encountering the mark. It’s not automatic. Translation only happens if it’s likely that the consumer would recognize the term translate it mentally into English.

Scott: All right. So let’s talk about how this comes up in practice. So during the trademark examination process, and that happens after an applicant has filed their trademark registration application with the Patent and Trademark Office, the USPTO examining attorneys are required to consider whether a foreign term should be translated under this document. The USPTO even has what’s called a Trademark manual of Examining Procedure, or the TMEP, which directs examiners to apply the doctrine when it is appropriate.

Richard: Here’s how they typically analyze it. First, language recognition. Is the word in a common, modern, foreign language that is spoken by a substantial portion of US consumers? Spanish, Italian, French, German, and Mandarin are the usual suspects.

Scott: Last Latin, not so much. Okay.

Richard: Not anymore.

Scott: Translatability. Is the term directly translatable? For example, Lupo, right? It’s Italian for wolf.

Richard: Third, relevance of the translation. Does the English translation affect the analysis of the mark? For instance, if the translation is descriptive or generic, that can be grounds for refusal. If the translated the word is confusingly similar to an already registered English language mark, that may lead to a Section 2D likelihood of confusion refusal.

Scott: Right. The doctrine of foreign equivalence only applies when an ordinary American purchaser is likely to translate the foreign mark into English. However, the Trademark Trial and Appeal Board has interpreted the phrase ordinary American purchaser as purchasers familiar with the foreign language. This definition of ordinary American purchaser effectively guarantees that the doctrine would be applied in almost every case involving a foreign word, since those familiar with a non-English language would ordinarily be expected to translate the word into English. So the bottom line of that is if your mark is in a foreign language, it’s always best to analyze whether that mark conflicts with its English language counterpart.

Richard: Scott, let’s discuss why this matters for brand owners, especially in entertainment and consumer-facing industries.

Scott: Sure. That’s a great idea. All right, so let’s say you’re launching a fashion label, and let’s say it’s called Bell Mode, French for beautiful fashion. Even though that sounds elegant, it could be viewed as merely descriptive when translated, making it hard, if not impossible to protect.

Richard: Or imagine you name your tequila Toro Azul, a Spanish for a blue bowl. If there’s already a brand called Blue Bull Spirits, you may be blocked, even if your mark is entirely in Spanish.

Scott: For entrepreneurs, the key is to avoid assuming that using foreign words gives your brand instant uniqueness. And also recognize that common or translatable foreign words may be treated the same, I will say, will likely be treated the same as their English counterparts in the eyes of the law, or at least in the eyes of the TTAB.

Richard: For attorneys and brand clearance professionals, here are three best practices. One, translate foreign terms in proposed trademarks as part of your clearance process. Two, Search for English equivalents and phonetic similarities in the US Patent and Trademark Office database and common law sources. Third, be prepared to address the doctrine in your application or in response to an office action.

Scott: If I may add, Richard, in the search, number 2, the search part, most of the time you’re going to hire a third-party search firm to do the searching for you. Make sure that they are also searching the English translation and not just the foreign word. If they’re not, call them up and tell them to rerun the search. Also, keep in mind that the doctrine doesn’t always work against the applicant. In some cases, it’s evoked to support refusal, but in others, it might help argue against confusion if translation is unlikely or if it’s a very obscure language, like Latin. All right, so before we wrap this up, it’s worth noting that, as I said, the doctrine doesn’t in every case. Courts and examiners will not apply the doctrine if the foreign term is rare or obscure, if the term has no clear English translation, or if the term would not be translated by the relevant consumer because they treat it as a brand name and not a literal word.

Richard: Also, the doctrine is more likely to apply when the language is widely spoken by a significant portion of US consumers. For example, Spanish language marks face closer scrutiny because of the large Spanish-speaking population in the United States.

Scott: The doctrine of foreign equivalence may sound like a niche rule, but it has major implications for brand strategy. If you’re working with foreign language names, whether it’s in the entertainment industry, fashion, food, beverages, or tech, understand this doctrine can help you avoid costly setbacks and strengthen your trademark rights from the start. Thanks again to my co-host, Richard Buckley. Richard, always great to have your insights here. Welcome back anytime.

Richard: Thank you, Scott. I look forward to the next refresher.

Scott: Thank you to our listeners or viewers for joining us on the briefing today. If you found this episode helpful or interesting, please take a moment to subscribe, like, and share it with your friends and colleagues. We’d love to hear from you. If you have any suggestions, leave us a comment or review, and let us know what topics you’d like us to cover in future episodes. I’m Scott Hervey. I’ll see you next time on the Briefing.