1210.10 Doctrine of Foreign Equivalents
Under the doctrine of foreign equivalents, foreign words from common, modern languages are translated into English to determine their geographic significance. Although the doctrine arises more often in cases involving likelihood of confusion, descriptiveness, and genericness, the doctrine also applies to issues involving geographic marks. See, e.g., In re Spirits Int’l, N.V., 563 F.3d 1347, 1351, 90 USPQ2d 1489, 1491 (Fed. Cir. 2009) (applying doctrine in determining whether MOSKOVSKAYA, a Russian word meaning “of or from Moscow,” was primarily geographically deceptively misdescriptive for vodka not from Moscow); Corporacion Habanos, S.A. v. Guantanamera Cigars Co., 102 USPQ2d 1085 (TTAB 2012) (holding GUANTANAMERA, a Spanish word meaning “girl from Guantanamo” or “of or from Guantanamo, Cuba,” primarily geographically deceptively misdescriptive for cigars); In re Joint Stock Co. “Baik”, 80 USPQ2d 1305 (TTAB 2006) (holding BAIKALSKAYA, a Russian word meaning “from Baikal,” primarily geographically descriptive of vodka from Lake Baikal).
Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule, but merely a guideline. The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. 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). The “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” Spirits Int’l, 563 F.3d at 1352, 90 USPQ2d at 1492.
While foreign words are generally translated into English for purposes of determining geographic significance, foreign words from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English for descriptiveness purposes. See Enrique Bernat F. S.A. v. Guadalajara Inc., 210 F.3d 439, 443, 54 USPQ2d 1497, 1499 (5th Cir. 2000) (noting that “one policy undergirding the doctrine is ‘the assumption that there are (or someday will be) customers in the U.S. who speak that foreign language.’” (quoting Otokoyama Co. v. Wine of Japan Import, Inc., 175 F.3d 266, 270, 50 USPQ2d 1626, 1629 (2d Cir. 1999))); cf. Gen. Cigar Co. Inc. v. G.D.M. Inc., 988 F. Supp. 647, 660, 45 USPQ2d 1481, 1492 (S.D.N.Y. 1997) (finding it doubtful that prospective purchasers would associate the mark with a word in a language spoken by the indigenous population of the Dominican Republic). 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 that Latin term is not considered dead. The same analysis should be applied to other uncommon languages.
See TMEP §§809–809.03 for information regarding how to ascertain the meaning of non-English wording in a mark. See also TMEP §§1207.01(b)(vi)–1207.01(b)(vi)(C), 1209.03(g), and 1211.01(a)(vii) regarding the doctrine of foreign equivalents.