T.M.E.P. § 809
Translation and Transliteration of Non-English Wording in Mark
Executive summary:
This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.
For more information on trademark law, please see the Trademark Section of BitLaw.
Previous Section (§808.03) | Next Section (§809.01)
809 Translation and Transliteration of Non-English Wording in Mark
An application to register a mark that includes non-English wording must include a statement translating the wording. 37 C.F.R. 2.32(a). Similarly, an application for a mark that comprises non-Latin characters must include a statement transliterating the characters. For this purpose, a transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters. A transliteration is required for a mark that comprises non-Latin characters even if the wording has no English translation. An example of a statement translating and transliterating a word in non-Latin characters is the following:
The non-Latin characters in the mark transliterate to "Asahi," and this means "Rising Sun."
Knowledge of the meaning of non-English words in marks is necessary for proper examination, because a non-English term is regarded in the same way as its English equivalent in determining descriptiveness, requiring disclaimer, and citing marks under §2(d) of the Act (see TMEP §§1207.01(b)(vi) and 1209.03(g)). Therefore, if there is no translation in the record, the examining attorney should ascertain the meaning of non-English wording through sources such as foreign language dictionaries before searching the mark. The examining attorney may also consult the Translations Branch of the USPTO.
If an application for a mark comprising non-English wording or non-Latin characters does not include an accurate translation and/or transliteration, the examining attorney should require the applicant to submit a statement of translation/transliteration, under 37 C.F.R. 2.61(b). The examining attorney may propose a translation, if appropriate. If the applicant submits a translation that is unacceptable to the examining attorney, the examining attorney should require amendment. The translation can be amended by examiner's amendment.
It is generally unnecessary to provide a translation of a foreign term if the term appears in an English dictionary (e.g., croissant, fiesta or flambˇ). However, if a term that appears in the English dictionary appears in a mark as part of a foreign idiomatic phrase or other unitary expression, a translation of the idiomatic phrase or unitary expression is required. It would be illogical to break the phrase into its individual word elements and to translate only the individual words that do not appear in the English dictionary. Such a translation would serve no useful purpose because it would not convey the true commercial impression of the phrase.
Example: If the mark included the phrase "la fiesta grande," an appropriate translation would be "the great celebration" or possibly "the great fiesta." It would be inappropriate to translate only "la" and "grande." The ultimate goal is to provide a translation that reflects the true meaning of the non-English wording in the mark and that reflects the commercial impression made by the entire phrase. See TMEP §809.01 regarding equivalency in translation.
It is generally unnecessary to provide a translation of foreign articles or prepositions, such as "de," "le," "la" or "il," when combined with English terms, because their meaning is generally understood and, in this context, they are being used to convey an impression different from their foreign meaning. For example, in the mark "LE CASE," it is unnecessary to translate "LE."
It is generally not necessary to translate words from dead or obscure languages. Cf. General Cigar Co. Inc. v. G.D.M. Inc., 988 F. Supp. 647, 45 USPQ2d 1481 (S.D.N.Y. 1997) (applicant had no obligation to disclose to USPTO that the term COHIBA for cigars means "tobacco" in the language of the Taino Indians in the Dominican Republic, because cigar smokers in the United States would not be aware of such a meaning). See TMEP §§1207.01(b)(vi) and 1209.03(g) regarding the applicability of the doctrine of foreign equivalents to words from dead or obscure languages. The determination of whether a language is "dead" must be made on a case by case basis, based upon the meaning that the term would have to the relevant purchasing public.
Example: Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in current dictionaries or news articles), then a Latin term is not considered dead. The same analysis should be applied to other uncommon languages.
When an application or certificate of registration includes a translation, both the non-English wording and the English translation will appear in the records of the Office. See TMEP §809.02 regarding the printing of the translation/transliteration statement in the Official Gazette and on the registration certificate.