Parlez-vous une autre langue? Foreign words as trademarks

Caroline B. Ahn, The Daily Record Newswire

In some situations, the use of choice foreign words perfectly captures that certain air of … je ne sais quoi. To convey such elusive quality or connotation as a source identifier, trademarks having foreign terms may be appealing.

There are numerous registrations of marks having or composed of foreign words on the Principal Register with United States Patent and Trademark Office, such as: BEAU MONDE for seasonings and spices, where “beau monde” means “beautiful world” in French; OBJECTO for audio speakers, where “objecto” means “object” in Spanish; and stylized LANGMEIL for wine, where “langmeil” means “the long mile” in German.

Before adopting a foreign word or phrase as a trademark, and before investing much resources in marketing, it is prudent to consider whether the proposed mark will be eligible for and successful in obtaining registration with the USPTO, as well as assessing whether such use will potentially be in conflict with another’s established rights.

Doctrine of foreign equivalents


When seeking to register a foreign word or phrase as a trademark, the applicant should be aware of the applicability of the doctrine of foreign equivalents in the examination of the trademark application.

“Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks,” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005). Examples of common foreign languages include French, German, Italian, Chinese, Spanish, Russian and Japanese. Whether the doctrine of foreign equivalents will be applied during examination of the trademark application depends on the significance of the foreign term(s) in the mark to the relevant consumers.

No exclusivity for generic terms


Just as generic English terms cannot function as a trademark or be registered, USPTO will not recognize or grant registration of a foreign word or words from a well-known modern language that is a generic name of a product. For example, FRUTTA FRESCA was considered generic for fresh fruit and thus could not be registered. No one can be granted the exclusive use of the generic, plain name of a product or particular services, either in English or its equivalent in any foreign language. A foreign term will generally not be labeled “generic” unless a significant portion of American consumers familiar with the particular foreign language recognizes it as the name of a product or services, regardless of the language used.

Descriptiveness based on English translation


Similarly, the USPTO will not register as a trademark a foreign word or words from a well-known modern language that is merely descriptive of the goods or services or of a feature, characteristic or quality of the goods and/or services. The descriptiveness of the foreign word will be determined according to its English translation, even where the foreign word may be meaningless to the general public because such foreign word has not been adopted into the English language.

For example, the application to register the stylized mark SADORU was refused on the ground that the mark is merely descriptive of the identified goods, i.e. motorcycle seats and ergonomic motorcycle pads for use with seats. The term “sadoru” is a Japanese word for “saddle,” without another relevant meaning. In another example, the application for LAPELLE for leather for furniture was also refused as being merely descriptive, where “la” is an Italian article meaning “the” and “pelle” means “leather” in Italian.

Likelihood of confusion


Additionally, a trademark will not be registered if it is confusingly similar to other marks. In this regard, the doctrine of foreign equivalents will be applied when the ordinary American purchaser would “stop and translate” the foreign terms in a mark into its English equivalent. If the English translation is exact, literal or direct, without any other relevant meaning or connotation, then the doctrine will typically apply.

Further, as with non-foreign term marks, in making the determination of registrability, the USPTO will consider a number of factors, including: (1) similarity of the marks in their entireties in appearance, sound connotation and commercial impressions; (2) similarity of the goods/services with which the marks are used; and (3) the similarity of the channels of trade in which the goods/services are sold.

For example, the application to register the mark LA PEREGRINA relating to jewelry and loose stones was refused for likelihood of confusion in view of the registered mark PILGRIM for jewelry and brooches and hair clips. The exact translation of the Spanish word “la peregrina” is “the pilgrim.” Despite the differences in appearance and pronunciation, the LA PEREGRINA and PILGRIM were considered foreign equivalents and thus, the marks were identical in meaning.

Other examples of refusals for likelihood of confusion include: the applied for mark MARAZUL for fish and seafood products in view of the registered mark BLUE SEA for non-live fish and frozen fish, where uncontradicted evidence demonstrated that “mar azul” means “blue sea” in Spanish; and the applied for mark CENTURY for wine in view of the registered mark SECOLO for table wine, where SECOLO is an Italian word for “century.”

Recently, the TTAB reversed the refusal to register the mark THE PERFECT FACE relating to body and beauty care cosmetics and skin care products. The trademark examining attorney had refused to register the mark for likelihood of confusion with the registered mark PARFAIT VISAGE for “pharmaceutical preparations in the form of topical ointments, namely, skin moisturizers and skin cleansers; skin cell growth stimulators; antivirals; antibacterial, and antifungal agents, namely, pharmaceuticals, natural oils, vitamins, minerals and hand washes.”

In this case, the TTAB concluded that the French words “PARFAIT VISAGE” was not an exact translation of “PERFECT FACE” because the more appropriate translation would be “le visage parfait.” Thus, in view of the differences in sound and appearance, without sufficient similarity in the connotations of the marks, TTAB did not find the marks to project similar overall commercial impressions and did not find likelihood of confusion.

Conclusion


As the doctrine of foreign equivalents is a guideline and not an absolute rule, the conclusions and holdings resulting from the application may be varied. Nonetheless, there are steps that can be taken to minimize risk and increase the chances of successfully registering a trademark having foreign terms. For example, when conducting a preliminary clearance of a proposed foreign word mark, a search for the foreign term as well as the English translation should be performed.  One may also look to non-modern foreign languages, such as Latin, when selecting a foreign word mark.

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Caroline B. Ahn is an associate with the intellectual property law firm of Heslin Rothenberg Farley & Mesiti PC. She can be reached at (518) 452-5600, or via email to cba@hrfmlaw.com.