1207.01(b)(vi)(B) When an Ordinary American Purchaser Would “Stop and Translate”
Issues regarding the doctrine of foreign equivalents arise early in examination, that is, at the time of conducting a search for confusingly similar marks. The search of foreign words in an applied-for mark must include a search of their English translation to ensure that all possible conflicting registrations and prior-filed applications have been identified in the event that the doctrine applies. See TMEP §§809.01-809.03 for information regarding how to ascertain the meaning of non-English wording in a mark and when a translation is required.
After conducting a complete search, an examining attorney must then assess whether a refusal under §2(d) may be warranted. If so, the examining attorney should research the English translation further using available resources, such as dictionaries, the Internet, and LexisNexis®, to ascertain whether there is sufficient evidence to support applying the doctrine.
As discussed below, if the evidence shows that the English translation is “literal and direct,” with no contradictory evidence of other relevant meanings or shades of meaning, then the doctrine should be applied, barring unusual circumstances. Further, if in its response to the application of the doctrine applicant argues that the foreign language is rare, obscure, or dead, then the examining attorney will need to provide evidence that the foreign language is a common, modern language.
English Translations – Literal and Direct
The Federal Circuit has stated that “[t]he test to be applied to a foreign word vis-a-vis an English word with respect to equivalency is not less stringent than that applicable to two English words.” In re Sarkli, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983).
Thus, the English translation evidence is a critical factor for the Board and the courts when determining whether to apply the doctrine. If the translation evidence shows that the English translation is unambiguously literal and direct, with no other relevant connotations or variations in meaning, the doctrine has generally been applied, and, therefore, should be applied by the examining attorney. See In re Aquamar, Inc., 115 USPQ2d 1122 (TTAB 2015) (applying foreign equivalents doctrine and holding that MARAZUL for fish and seafood, and BLUE SEA for fish, likely to cause confusion, after finding that the record evidence established that “mar azul” means “blue sea”); In re La Peregrina Ltd., 86 USPQ2d 1645, 1648-50 (TTAB 2008) (holding LA PEREGRINA for jewelry, pearls, pearl jewelry, and precious stones, and PILGRIM for jewelry, likely to cause confusion, where dictionary evidence showed that “pilgrim” is an exact translation of “peregrina” and there was no other dictionary evidence to the contrary); In re Thomas, 79 USPQ2d 1021, 1024-25 (TTAB 2006) (holding MARCHE NOIR for jewelry, and BLACK MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion, where the evidence showed “MARCHE NOIR” is the exact French equivalent of the English idiom “Black Market”); In re Ithaca Indus., Inc., 230 USPQ 702, 704 (TTAB 1986) (LUPO for men’s and boys’ underwear, and WOLF and design for various clothing items, likely to cause confusion, where there was no dispute that “LUPO” is the Italian equivalent of “wolf”); In re Hub Distrib., Inc., 218 USPQ 284, 284-85 (TTAB 1983) (holding EL SOL for clothing, and SUN and design for footwear, likely to cause confusion, where “EL SOL” was determined to be the “direct foreign language equivalent” of the term “sun”); see also Ex parte Odol-Werke Wien GmbH., 111 USPQ 286, 286 (Comm’r Pats. 1956) (finding the French language mark CHAT NOIR and its English language equivalent BLACK CAT confusingly similar because “’CHAT NOIR’ undoubtedly means, and is the same as, ‘Black Cat’ to a substantial segment” of the relevant purchasers).
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. See, e.g., In re Perez, 21 USPQ2d 1075, 1076-77 (TTAB 1991) (holding EL GALLO for fresh vegetables, and ROOSTER for fresh citrus fruit, likely to cause confusion, rejecting applicant’s argument that purchasers would ascribe other meanings to “gallo,” where ”rooster” was the first English translation listed in a Spanish-English language dictionary entry for “gallo,” where “gallo” was the only listed Spanish translation in a dictionary entry for ”rooster,” and where the design of a rooster on the specimen reinforced the translation of “GALLO”).
Where the evidence shows that the English translation is not exact, literal, or direct, the doctrine of foreign equivalents has generally not been applied to find the marks confusingly similar. See Sarkli, 721 F.2d at 354-55, 220 USPQ at 112-13 (holding REPECHAGE for various skin-care products, and SECOND CHANCE for face creams and other toiletries, not likely to cause confusion, where the evidence failed to show that the terms were direct foreign equivalents); see also In re Buckner Enters., 6 USPQ2d 1316 (TTAB 1987) (holding DOVE (with design) for stoves and furnaces, and PALOMA for various forms of gas heating apparatus, not likely to cause confusion, because, inter alia, the Spanish word “paloma” and the English word “dove” are not exact synonyms in that “paloma” can be translated into either “dove” or “pigeon”). Thus, several translation dictionaries showing variations in the English meaning constitute evidence that the foreign word or term may not have a literal and direct translation, and the doctrine should not be applied.
Common, Modern Foreign Languages
The doctrine applies to words or terms from common, modern languages, which encompasses all but dead, obscure, or unusual languages. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Thus, an examining attorney should provide evidence to show that the foreign language is a common, modern language. The type of evidence will vary depending on the particular facts of the case but, if available, the examining attorney should provide evidence of the percentage or number of United States consumers who speak the language in question. For example:
- Census evidence provided by applicant, showing that only 0.6% of the American population speak French “very well” or “well,” was used by the Board against the applicant to find that French is a commonly spoken language and that, of the foreign languages with the greatest number of speakers in the United States, French was second only to Spanish. Thomas, 79 USPQ2d at 1024.
- Evidence showing that 706,000 Russian-speakers live in the United States was persuasive evidence to establish that a “significant portion of consumers” would understand the English meaning of the Russian mark for Russian vodka. In re Joint Stock Co. “Baik,” 80 USPQ2d 1305, 1310 (TTAB 2006).
Census evidence identifying the number of people who speak various foreign languages in the United States can be found at http://www.census.gov/hhes/socdemo/language/.
If such evidence is unavailable or unpersuasive, the examining attorney may instead provide other evidence that the language in question is a common, modern language by establishing, for example, that the foreign country where the language is spoken is a prominent trading partner of the United States or that the foreign language is spoken by a sizeable world population. Such evidence may be obtained from the USPTO’s Translations Branch, as well as the Internet, LexisNexis®, and any other relevant electronic or print resources.
If evidence shows that the language at issue is highly obscure or a dead language, the doctrine will generally not be applied. See Palm Bay Imps., 396 F.3d at 1377, 73 USPQ2d 1689, 1696; cf. In re Spirits Int’l, N.V., 563 F.3d 1347, 1351, 90 USPQ2d 1489, 1491 (Fed. Cir. 2009) (indicating that the doctrine of foreign equivalents does not require that terms from dead or obscure languages be literally translated for the purpose of determining descriptiveness). The determination of whether a language is “dead” is made on a case-by-case basis, based upon the meaning the word or term would have to the relevant purchasing public. For example, Latin is generally considered a dead language. However, if evidence shows that a Latin term is still in use by the relevant purchasing public (i.e., if the term appears in current dictionaries or news articles), then this Latin term would not be considered dead. The same analysis is applied to other words or terms from uncommon or obscure languages.
Other Considerations: Alternate Meaning of Mark and Marketplace Circumstances of the Commercial Setting in Which the Mark is Used
The Board may also review the evidence of record to determine the following:
- (1) Whether the foreign wording has a meaning in the relevant marketplace that differs from the translated meaning in English; and/or
- (2) Whether it is more or less likely that the foreign expression will be translated by purchasers because of the manner in which the term is encountered in the marketing environment as used in connection with the goods and/or services.
See Thomas, 79 USPQ2d at 1025-26; see also In re Jos. Schlitz Brewing Co., 223 USPQ 45, 45-46 (TTAB 1983) (considering whether purchasers would be likely to translate the mark “KUHLBRAU” into its merely descriptive English equivalent, “cool brew”). In making such determinations, the Board generally reviews evidence such as dictionary definitions, declarations, and specimens.
Typically, the doctrine will not be applied where the foreign wording has developed an alternate meaning in the relevant marketplace that is different from the translated meaning in English, and the evidence shows that the alternate meaning would be understood by the relevant purchasing public. See La Peregrina, 86 USPQ2d at 1649 (finding that if sufficient evidence had been provided to show that the Spanish-language mark LA PEREGRINA, which translates to mean “the pilgrim,” for goods including pearls and pearl jewelry, was viewed by the relevant purchasing public as the “name of a very famous and unique pearl,” such would be a situation “where purchasers would not translate the name”); cf. Cont’l Nut Co. v. Le Cordon Bleu S.a.r.l., 494 F.2d 1395, 1396-97, 181 USPQ 646, 647 (C.C.P.A. 1974) (finding that applicant’s ownership of a prior registration for “BLUE RIBBON” did not preclude opposer from asserting damage resulting from applicant’s registration of the mark CORDON BLEU, (which literally translates to “blue ribbon”) because CORDON BLEU would not be translated by, or have the same significance to, an American purchaser in view of the adoption by the English language of the wording CORDON BLEU, as evidenced by American English dictionary entries indicating that such wording refers to a highly skilled cook).
The doctrine also typically will not be applied where the record indicates that it is unlikely purchasers would translate the mark because of “marketplace circumstances or the commercial setting in which the mark is used.” La Peregrina, 86 USPQ2d at 1648; see also Thomas, 79 USPQ2d at 1026 (finding “MARCHE NOIR” confusingly similar to “BLACK MARKET MINERALS,” but suggesting that a different conclusion might have been reached if the marketplace circumstances or commercial setting in which the mark was used were such that it would be unlikely for purchasers to translate “MARCHE NOIR”); In re Tia Maria, Inc., 188 USPQ 524, 525-26 (TTAB 1975) (holding TIA MARIA (which translates to “Aunt Mary”) for restaurant services, and AUNT MARY’S for canned fruits and vegetables, not likely to cause confusion, because, inter alia, a person dining at the TIA MARIA restaurant surrounded by its Mexican décor and Mexican food, would be likely to accept “TIA MARIA” as it is and not translate it into “AUNT MARY”).