The Trademark Doctrine of Foreign Equivalents: You Say Tomato
It is a given that registration of two confusingly similar trademarks will not be granted by the US Patent & Trademark Office (USPTO).
As a general rule, this remains true even if one of the two marks is the same word in a foreign language.
Thus, a trademark for “balik,” the Turkish word for “fish,” would not be granted if registration of the English word “fish” had already been granted.
The presumption is that, for consumers who happen to speak both Turkish and English, the likelihood of confusion as to the source of the product or service being sold remains.
This is the so-called “Doctrine of Foreign Equivalents.” It is a basis for the refusal of an application for trademark registration by the USPTO.
When Does the Doctrine of Foreign Equivalents Apply?
The Doctrine is more of a guideline than a hard-and-fast rule.
It applies only when an ordinary American consumer would “stop and translate” a mark’s foreign wording into its English counterpart.
However, it has been applied where both marks are in the same foreign language as well, or in two separate foreign languages.
So when would someone “stop and translate” a mark?
Courts have held that, when the words are directly literal with no other “relevant connotations,” the Doctrine applies.
Where the words are less than exactly and literally direct, the Doctrine has not been applied.
The Doctrine applies to Common Modern languages only.
It does not apply to “dead” languages. However, whether a language is “dead” or not can be a subject of dispute.
Relevant to this question is the number of speakers of the language in question in the United States, as determined by US Census results.
Thus, the question may be asked: what percentage of the US population speaks Turkish, or Khmer, or other?
However, it is safe to say that a language such as Aramaic is truly “dead” and its terminology not likely available as a basis for a USPTO application refusal.
The use and understanding of a language within a particular market may also be a point of examination here.
Even if a proposed mark does fall into the shadow of the Doctrine of Foreign Equivalents, all of the usual likelihood of confusion considerations will still be relevant.
Detroit Michigan Trademark Lawyer: The Bottom Line Regarding the Doctrine of Foreign Equivalents
The bottom line with regard to the registration of a trademark is that it is crucial to retain a knowledgeable attorney to assist you with your application.
A licensed attorney will provide you a measure of comfort in knowing that details such as these will be properly handled and will not upend your chances of a successful registration.
The Hilla Law Firm is located in the Detroit area but represents clients nationally for trademark matters and offers free video or telephonic consultations.
If you are interested in discussing the filing of an initial trademark application or defending an office action already filed, please contact us at (734) 743-1489 to discuss your matter or click here to directly schedule your initial trademark consultation into our calendaring system.