TMEP 809.01: Examining Applications for Marks Comprising Non-English Wording that Do Not Include an Accurate Translation or Transliteration

October 2017 Edition of the TMEP

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809.01    Examining Applications for Marks Comprising Non-English Wording that Do Not Include an Accurate Translation or Transliteration

In order to properly examine applications with non-English wording, the translation and transliteration of the non-English wording must be determined prior to performing a search of the mark.  This is critical because the foreign equivalent of an English term may be regarded in the same way as the English term for purposes of determining descriptiveness, requiring disclaimer, and citing marks under §2(d) of the Act ( see, e.g., TMEP §§1207.01(b)(vi), 1209.03(g)).

Therefore, if there is no translation and/or transliteration in the initial application, the examining attorney should ascertain the meaning of non-English wording before searching the mark.

The examining attorney may obtain the meaning of non-English wording through sources such as foreign language dictionaries and search engines.  The examining attorney may also consult the Trademark Librarian or the Translations Branch, as appropriate.

If research by the examining attorney, the Trademark Library, and/or the Translations Branch indicates that the term has no meaning or no clear and exact equivalent in a foreign language, although no inquiry regarding the meaning in a foreign language is necessary, the examining attorney has the discretion under 37 C.F.R. §2.61(b) to make such an inquiry. If no inquiry is made, the examining attorney must enter a Note to the File in the record indicating that the term was checked for a translation.  In such cases, a statement regarding meaning must not be entered for printing in the Official Gazette. See TMEP §809.01(a) regarding when an inquiry is made.

If the examining attorney determines the meaning of the non-English term(s), he or she must search the terms as they appear in the application, the transliterated terms, and the English translation(s) for the terms, as applicable.  The examining attorney must also require (under 37 C.F.R. §2.61(b) ) that an accurate translation be made of record by the applicant using the researched translation or other accurate translation provided by applicant.  If the applicant disputes a translation obtained through online resources, the examining attorney should supplement the record with evidence from the Trademark Librarian and/or the Translations Branch.

If the translation is provided or supplemented after the examining attorney has conducted a search for conflicting marks, the examining attorney must conduct a new search of the transliterated terms and/or the English translation(s) for the terms, as applicable.