Examination Guide 1-07

This examination guide provides guidance on when to apply the doctrine of foreign equivalents (“the doctrine”) to foreign-language marks with respect to refusals issued under Trademark Act Section 2(d).¹ See 15 U.S.C. §1052(d). Specifically, the examination guide addresses when an examining attorney should consider the foreign wording in a mark to be the equivalent of its English translation for purposes of comparing marks.

Whether an examining attorney should apply the doctrine turns upon the significance of the foreign mark to the relevant purchasers, which is based on an analysis of the evidence of record, including, for example, dictionary, Internet and LEXISNEXIS® evidence. If the evidence shows that the relevant English translation is literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists, the doctrine generally should be applied by the examining attorney. See, e.g., In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding the Italian language mark LUPO for men’s and boys’ underwear, which translates to mean “wolf,” likely to be confused with WOLF and design for various clothing items, because LUPO had a literal and direct English translation such that the doctrine was applied).

If an examining attorney determines that the doctrine is applicable, the examining attorney must also apply the relevant du Pont factors to assess whether there is a likelihood of confusion between the marks. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); In re L’Oreal S.A., 222 USPQ 925, 926 (TTAB 1984) (noting that “similarity in connotation [of the marks] must be viewed as but a single factor in the overall evaluation of likelihood of confusion”).

II BACKGROUND ON THE DOCTRINE OF FOREIGN EQUIVALENTS

Marks consisting of or including foreign words or terms from common, modern languages are translated into English to determine genericness, descriptiveness, likelihood of confusion, and other similar issues. See Palm Bay,396 F.3d at 1377, 73 USPQ2d at 1696. With respect to likelihood of confusion, “[i]t is well established that foreign words or terms are not entitled to be registered if the English language equivalent has been previously used on or registered for products which might reasonably be assumed to come from the same source.” Mary Kay Cosmetics, Inc. v. Dorian Fragrances, Ltd., 180 USPQ 406, 407 (TTAB 1973).

The doctrine has evolved into a guideline, not an absolute rule, and is applied only when the “ordinary American purchaser” would “stop and translate” the foreign wording in a mark. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696; TMEP §1207.01(b)(vi). The Trademark Trial and Appeal Board (“the Board”) further clarified that the “ordinary American purchaser” is one who is knowledgeable in both English and the relevant foreign language. In re La Peregrina Ltd., ___ USPQ2d ___, Ser. No. 78676199, slip op. at 9 (TTAB Mar. 14, 2008); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006).

With respect to likelihood of confusion, the doctrine has been applied generally in the situation where the wording in one mark is entirely in English and the wording in the other mark or marks is entirely in a foreign language. See, e.g., In re Perez, 21 USPQ2d 1075 (TTAB 1991); In re Am. Safety Razor Co.,2 USPQ2d 1459 (TTAB 1987); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983). This is the most common scenario in the case law.

The Board, however, has applied the doctrine where the wording in both marks being compared is in the same foreign language. See In re Lar Mor Int’l, Inc., 221 USPQ 180, 181-83 (TTAB 1983) (stating that “[i]t seems to us that the fact that both marks may be comprised of foreign words should not mean that we can disregard their meanings. Indeed, we believe that many members of the American public, even those who have only a rudimentary acquaintance with the French language, are likely to understand the significance of the respective terms;” the Board applied the doctrine to the French marks BIEN JOLIE, which means “quite pretty,” and TRES JOLIE, which means “very pretty,” even though it did not find a likelihood of confusion between the marks because of the marks’ highly suggestive nature). In the Lar Mor case, the marks in question consisted of common French terms and thus it was perhaps more likely that the ordinary American purchaser would stop and translate such terms. But see Palm Bay, 396 F.3d at 1369, 73 USPQ2d at 1689 (finding the doctrine inapplicable to applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, but upholding the Board’s likelihood of confusion determination for such marks for other reasons).

The Board has also applied the doctrine where the wording in one of the marks is in a foreign language and the wording in the other mark or marks is in a different foreign language. See Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., 49 USPQ2d 2018 (TTAB 1998) (applying the doctrine and finding a likelihood of confusion between the Italian language mark DUE TORRI for wines, which means “two towers,” and the Spanish language marks TORRES for wines and brandy and TRES TORRES for brandy, which mean “towers” and “three towers,” respectively). However comparing marks in different foreign languages appears to be a rare occurrence. It seems less likely that the ordinary American purchaser would be fluent in two or more foreign languages. Thus the doctrine may not be as relevant, and certainly not the sole determinative factor in a situation such as the Miguel Torres case where the marks were found confusingly similar because they were similar in both sound and meaning.

However, the Board has yet to apply the doctrine in a published decision where the wording in one or more of the marks being compared consists of a combination of English and foreign-language words or terms. In such a case, the issue will likely remain whether the ordinary American purchaser would stop and translate these combined-language marks. The sufficiency of the translation evidence, the nature of the foreign and English combined-wording (i.e., whether the wording is arbitrary, suggestive, generic, etc.), and any other relevant facts and evidence should be considered in these cases.

III. WHEN AN ORDINARY AMERICAN PURCHASER WOULD "STOP AND TRANSLATE"

Issues regarding the doctrine 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.

After conducting a complete search, an examining attorney must then assess whether a refusal under Section 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.

A. English Translations – Literal and Direct

The English translation evidence² is a critical factor for the courts and the Board 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 La Peregrina, ___ USPQ2d at ___, slip op. at 10, 15-16 (holding the Spanish language mark LA PEREGRINA for jewelry, pearl jewelry and precious stones, which translates to mean “the pilgrim,” likely to be confused with PILGRIM for jewelry where the two terms were equivalent in meaning and there was no dictionary evidence to the contrary); In re Thomas, 79 USPQ2d at 1021 (holding the French language mark MARCHE NOIR for jewelry, which is the exact French equivalent of the English idiom “Black Market,” likely to be confused with the cited mark BLACK MARKET MINERALS for retail jewelry and mineral store services because the addition of MINERALS did not serve to distinguish the marks); In re Ithaca Indus., 230 USPQ at 702 (holding the Italian language mark LUPO for men’s and boys’ underwear, which translates to mean “wolf,” likely to be confused with WOLF and design for various clothing items); In re Hub Distrib., 218 USPQ at 284 (holding the Spanish language mark EL SOL for clothing likely to be confused with its English language equivalent SUN for footwear where EL SOL was determined to be the “direct foreign language equivalent” of the term SUN); see also Ex parte Odol-Werke Wien Gesellschaft M.B.H., 111 USPQ 286, 286 (Comm’r Pats. 1956) (holding the French language mark CHAT NOIR and its English language equivalent BLACK CAT confusingly similar because they have the same meaning).

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 In re Perez, 21 USPQ2d at 1075 (holding the Spanish language mark EL GALLO for fresh vegetables, which translates to mean “rooster,” likely to be confused with ROOSTER for fresh citrus fruit where the English translation was the first definition listed in the Spanish-English language dictionary, GALLO was the only listed translation for the English wording ROOSTER, and the design of a rooster on the specimen reinforced the translation even though GALLO had other meanings).

Specifically, the Federal Circuit has stated that “[t]he test to be applied to a foreign word vis-à-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).

In contrast, the doctrine has generally not been applied where the evidence shows that the English translation is not exact, literal, or direct. See In re Sarkli, 721 F.2d at 353, 220 USPQ at 111 (finding REPECHAGE for various skin care products not to be the French equivalent of SECOND CHANCE for face creams and other toiletries because the translation dictionary evidence showed they were not direct foreign equivalents); see also In re Buckner Enters. Corp., 6 USPQ2d 1316 (TTAB 1987) (finding the Spanish language mark PALOMA, which translates primarily into English to mean “pigeon, dove,” has a different connotation from the cited registration DOVE and thus the doctrine was not applied). 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.

Further, when comparing two different foreign-language marks, the same strict standard regarding equivalency in translation would also apply.

B. Common, Modern Foreign Languages

The doctrine applies to words or terms from common, modern languages, which encompasses all but dead, obscure or unusual languages. An applicant may respond to the application of the doctrine by arguing that the foreign language is obscure, or not commonly spoken in the United States, and thus the doctrine is inapplicable. If this or a similar argument is set forth, or if the foreign language appears to be obscure or unusual, 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:

If such evidence is unavailable or unpersuasive, then, in the alternative, 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(ies) where the language is spoken are prominent trading partners of the United States or that the foreign language is spoken by a sizeable world population. Such evidence should be obtained from the Office’s Translations Branch, as well as the Internet, LEXISNEXIS®, and any other relevant electronic or print resources. See In re Savisa (Pty.) Ltd., Ser. No. 78154196, 2005 TTAB LEXIS 91, at *6-12 (Feb. 24, 2005) (finding Afrikaans to be a common, modern and not-obscure language and applying the doctrine even though the applicant submitted evidence that only .096% of Americans spoke Afrikaans where the examining attorney submitted a report from the USPTO translator stating that Afrikaans is a well-established language recognized by all of the advanced and developed nations, it is a form of old Dutch and is a European language that is familiar in the United States, and it is one of the principal Germanic languages spoken by more than 20 million people; the Board took judicial notice of the following sources: World Almanac and Book of Facts 2004 (W. McGeveren, editorial dir.) which states that six million people speak the language, with significant numbers in ten countries; Facts About the World’s Languages: An Encyclopedia of the World’s Major Languages, Past and Present (J. Garry & C. Rubino eds., 2001), which states that Afrikaans is the home language of 6.2 million people in South Africa (out of a total population of 44 million people); and the language was spoken as a second or third language by an indeterminate but very large number of Black South Africans (who speak Bantu languages), Asians, and English-speaking Whites).

Common, modern languages have been found to include Spanish, French, Italian, German, Chinese, Japanese, Russian, Polish, Hungarian, Serbian and Yiddish. See, e.g., Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 129 USPQ 411 (C.C.P.A. 1961) (Hungarian); In re La Peregrina, ___ USPQ2d at ___, slip op. at 9 (Spanish); In re Joint-Stock Co. “Baik,” 80 USPQ2d at 1305 (Russian); In re Perez, 21 USPQ2d at 1075 (Spanish); In re Oriental Daily News, Ltd., 230 USPQ 637 (TTAB 1986) (Chinese); In re Ithaca Indus., 230 USPQ at 702 (Italian); In re Jos. Schlitz Brewing Co., 223 USPQ 45 (TTAB 1983) (German); In re Westbrae Natural Foods, Inc., 211 USPQ 642 (TTAB 1981) (Japanese); In re Optica Int’l, 196 USPQ 775 (TTAB 1977) (French); In re Bagel Nosh, Inc., 193 USPQ 316 (TTAB 1976) (Yiddish); In re Hag Aktiengesellschaft, 155 USPQ 598 (TTAB 1967) (Serbian); In re New Yorker Cheese Co., 130 USPQ 120 (TTAB 1961) (Polish).

If evidence shows that the language at issue is highly obscure or a dead language, the doctrine will generally not be applied. Determining whether a language is “dead” is based on 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. TMEP §§1207.01(b)(vi), 1209.03(g).

C. Other Considerations: Alternate Meaning of Mark and Marketplace Circumstances or the Commercial Setting in Which the Mark Is Used

The Board, generally, will also review the evidence of record to determine the following:

Whether the foreign wording has a meaning in the relevant marketplace that differs from the translated meaning in English; and

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 In re Thomas, 79 USPQ2d at 1025-26; see also In re Jos. Schlitz Brewing Co., 223 USPQ at 45; In re Optica Int’l, 196 USPQ at 777. In making such determinations, the Board has generally reviewed 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 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 the French language mark CORDON BLEU, which translates to mean “blue ribbon,” would not be translated by or have the same significance to an American purchaser because of the adoption of the wording CORDON BLEU into English, as evidenced by American dictionary entries indicating that such wording refers to a cook of great skill); cf. In re La Peregrina, ___ USPQ2d at ___, slip op. at 14 (finding that if sufficient evidence had been provided to show that the Spanish language mark LA PEREGRINA for goods including pearls and pearl jewelry, which translates to mean “the pilgrim,” 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”).

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.” In re La Peregrina, ___ USPQ2d at ___, slip op. at 10; In re Thomas, 79 USPQ2d at 1026. For example, the doctrine may not be applied where it is unlikely that purchasers will translate the foreign expression because of the manner in which the foreign term is used on the specimen. See In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976) (finding that the Spanish language mark LA POSADA for lodging and restaurant services, which translates to mean “the inn,” would not likely be translated by American purchasers because of the manner of use of the mark on applicant’s specimens, in which applicant used the mark in advertising brochures and on a sign mounted in front of its motor hotel with the words “motor hotel” appearing directly under the notation LA POSADA). Further, the doctrine may not be applied due to marketplace circumstances, which include differing channels of trade for the relevant goods and/or services. See In re Tia Maria, Inc., 188 USPQ 524, 525-26 (TTAB 1975) (finding that the Spanish language mark TIA MARIA for restaurant services, which translates to mean “Aunt Mary,” when compared with the registered mark AUNT MARY’S for canned fruits and vegetables, would not likely be translated by American purchasers because a person who had purchased Aunt Mary’s canned fruits and vegetables from a supermarket would, upon dining at the TIA MARIA restaurant surrounded by its Mexican décor and serving Mexican food, not likely translate TIA MARIA into AUNT MARY).

IV. LIKELIHOOD OF CONFUSION FACTORS STILL APPLY WHEN ASSESSING WHETHER MARKS ARE CONFUSINGLY SIMILAR

If the examining attorney has sufficient evidence to show that the foreign wording has a relevant, literal and direct English translation such that the foreign wording has an English language equivalent, then the doctrine generally should be applied to the foreign wording in a mark or marks. However, applying the doctrine is only part of the process of determining whether the marks being compared are confusingly similar. Appearance, sound, meaning, and commercial impression are also factors to be considered when comparing marks. See Palm Bay, 396 F.3d at 1371, 73 USPQ2d at 1691 (citing In re E.I. du Pont, 476 F.2d at 1361, 177 USPQ at 567).

Similarity of the marks in one respect – sight, sound or meaning – does not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related. Rather, the rule is that, taking into account all of the relevant facts of a particular case, similarity as to one factor alonemay be sufficient to support a holding that the marks are confusingly similar. In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); TMEP §1207.01(b)(i).

For example, if the English and foreign marks being compared are weak or highly suggestive, or have additional wording or matter that serves to distinguish the marks, then regardless of application of the doctrine and similarity in meaning, the marks may not be considered confusingly similar. See In re Ness & Co., 18 USPQ2d 1815 (TTAB 1991) (finding no likelihood of confusion between the French mark LABONTE, which means “the goodness,” and the mark GOOD-NESS for the same goods because of the laudatory nature of the marks, the dissimilarity in sight and sound, the slight differences in meaning, and the connotation of the mark GOOD-NESS in relation to applicant’s company name “Ness & Co.”); In re L’Oreal, 222 USPQ at 925 (applying the doctrine to the French mark HAUTE MODE, which means “high fashion,” but finding no likelihood of confusion between the mark and HI-FASHION SAMPLER because of the suggestive nature of the marks and because of the differences in the marks due to the addition of the term SAMPLER in the English language mark).

If the marks being compared are both in a foreign language, and application of the doctrine shows that these marks have the same or a very similar meaning, the following factors should also be assessed: (1) whether the English meaning of the marks is weak or highly suggestive with respect to the goods and/or services, and (2) whether the marks being compared are similar in sound and/or appearance in addition to having the same or similar meaning. If the marks are not weak or highly suggestive and are similar in meaning and sound, such marks have been found confusingly similar. See Miguel Torres S.A., 49 USPQ2d at 2018 (applying the doctrine and holding the Italian language mark DUE TORRI for wines, which means “two towers” likely to be confused with the Spanish language mark TORRES for wines and brandy and TRES TORRES for brandy, which mean “tower” and “three towers,” respectively, because the marks were similar in sound and connotation); In re Lar Mor, 221 USPQ at 180 (applying the doctrine to the French marks BIEN JOLIE, which means “quite pretty,” and TRES JOLIE, which means “very pretty,” but holding no likelihood of confusion between the marks, even though the goods were related clothing products because of the highly laudatory or suggestive nature of the marks’ English translations and because of the marks’ differences in sound and appearance).

In addition, when comparing only foreign marks, even if it is determined that the doctrine does not apply, the marks may still be found confusingly similar for other reasons, such as similarity in sound and/or appearance. See Palm Bay, 396 F.3d at 1369, 73 USPQ2d at 1689 (finding the doctrine inapplicable to applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, but upholding the Board’s likelihood of confusion determination for such marks for other reasons).

V. CONCLUSION

In determining whether to apply the doctrine, the examining attorney should consider the following factors: (1) whether the English translation is unambiguously literal and direct; (2) whether the foreign language is a common, modern language and not obscure; and (3) whether the mark has an alternate meaning, or marketplace circumstances or the commercial setting in which the mark is used make translation of the mark more or less likely. This determination, however, hinges on the translation evidence. If the foreign word or term has a direct English language equivalent, then the doctrine is generally applied.

Application of the doctrine, though, is only one factor in a likelihood of confusion determination. If the doctrine is applicable, the relevant du Pont factors must also be applied in all cases; that is, the marks are compared to determine whether they are confusingly similar and the goods and/or services are compared to determine whether they are sufficiently similar or related. SeeTMEP §§1207 et seq. for more information regarding refusals under Section 2(d).

1. Although this examination guide is specifically directed to application of the doctrine in the context of likelihood of confusion under Section 2(d), usually the same general formulation of the doctrine applies in other contexts, such as Section 2(e) refusals. 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).

2. To provide evidence of the meaning of non-English wording in a mark, the examining attorney may conduct research using online resources such as X-Search (viewing similar marks), online foreign language dictionaries, Google®, and free online translation tools; or consult the TM Library and/or the Office’s Translations Branch, as appropriate. If an applicant disputes a translation obtained through online resources, and in any case likely to be appealed, the examining attorney should supplement the record with evidence from the TM Librarian and/or the Office’s Translations Branch. In all cases, the examining attorney must require the applicant to provide an accurate translation of non-English wording in the mark if no translation was provided in the application. See 37 C.F.R. §§2.32(a), 2.61(b); TMEP §809.

I. INTRODUCTION

II BACKGROUND ON THE DOCTRINE OF FOREIGN EQUIVALENTS

III. WHEN AN ORDINARY AMERICAN PURCHASER WOULD "STOP AND TRANSLATE"

A. English Translations – Literal and Direct

B. Common, Modern Foreign Languages

C. Other Considerations: Alternate Meaning of Mark and Marketplace Circumstances or the Commercial Setting in Which the Mark Is Used

IV. LIKELIHOOD OF CONFUSION FACTORS STILL APPLY WHEN ASSESSING WHETHER MARKS ARE CONFUSINGLY SIMILAR

V. CONCLUSION