TMEP 809.02: Equivalency in Translation

October 2017 Edition of the TMEP

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809.02    Equivalency in Translation

The translation that should be relied upon in examination is the English meaning that has significance in the United States as the equivalent of the meaning in the non-English language.  The following are examples of equivalency in translation:

  • (1) "Chat Noir" - The exact equivalent in English is "black cat," and this translation would undoubtedly be recognized by the purchasing public in this country. Ex parte Odol-Werke Wien Gesellschaft M.B.H., 111 USPQ 286 (Comm’r Pats. 1956) (affirming the refusal to register the mark "Chat Noir" because the words "Black Cat" were already registered for related goods).
  • (2) "Mais Oui" - The English equivalent of the phrase "mais oui" is "why, certainly," or "why, of course," and not the literal translation "but yes." In re Societe Des Parfums Schiaparelli, S.A., 122 USPQ 349 (TTAB 1959). A satisfactory translation must be some normal English expression that will be the equivalent in meaning of the term "mais oui" in French.
  • (3) "Schwarzkopf" - The term can be literally translated as "black head," but, even to German-speaking persons, the primary significance of "Schwarzkopf" is most likely that of a surname.  When the primary significance of a non-English term is as a surname, the term should not be translated. See TMEP §1211 regarding surnames.

If any question arises as to the proper translation of a mark, the examining attorney may consult the Trademark Library or Translations Branch of the USPTO.  The determination of the appropriate translation often requires consideration of the meaning in relation to the goods and/or services.  See TMEP §1207.01(b)(vi) regarding the use of the doctrine of foreign equivalents in determining likelihood of confusion under 15 U.S.C. §1052(d), TMEP §1209.03(g) regarding the doctrine of foreign equivalents in determining questions of descriptiveness under 15 U.S.C. §1052(e)(1), and TMEP §1211.01(a)(vii) regarding the doctrine of foreign equivalents in determining whether a term is primarily merely a surname under 15 U.S.C. §1052(e)(4).