From time to time, we run into proposed trademarks that are in another language. This generally starts a conversation about the doctrine of foreign equivalents. The doctrine of foreign equivalents requires that foreign words be translated into English to determine if there is a likelihood of consumer confusion with a mark already registered or to determine if the applied-for mark is descriptive or generic. When applicants apply for a mark in a different language, they are expected to provide the translation of the mark or else the examining attorney will seek the relevance of the applied-for mark.

There is often question about when the doctrine is applied.  It’s applied when the “ordinary American purchaser” would “stop and translate” the foreign wording in a mark. That isn’t terribly helpful on its own.  It has been clarified that the “ordinary American purchaser” isn’t the average American, but rather is one who is knowledgeable in both English and the relevant foreign language. So, for purposes of this doctrine, most foreign word marks will be translated to English unless they are from obsolete, dead, or obscure languages (languages such as Afrikaans and Serbian have been found to be common enough for the doctrine to be applied).  Once the mark is translated, the English translation is used to determine whether there is a likelihood of confusion.

Examples include LA PEREGRINA (the pilgrim in Spanish) likely to be confused with the mark PILGRIM and the Italian language mark LUPO for men’s and boys’ underwear was likely to be confused with WOLF and design for various clothing items. 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.

KuroumaDarkHorseWhat if the translation is not direct? Recently, Dark Horse Distillery filed applications to register the standard character mark DARK HORSE for distilled spirits in International Class 33 but was refused registration based on a likelihood of confusion with a series of marks using the Japanese word KUROUMA for Japanese distilled spirits of barley soju in International Class 033. Those registrations noted that “[t]he foreign wording in the mark translates into English as ‘Dark Horse’”.

Applicant submitted evidence to establish that “dark horse” is not an exact equivalent of the registered KUROUMA marks but rather was only one of several relevant meanings.  The Board ultimately held that “[b]ecause other relevant translations of KUROUMA exist, such as black horse, black animal, evil horse or evil animal, the doctrine of foreign equivalents is inapplicable.”

Kurouma

A few years earlier, OpBiz, LLC filed an application to register the mark HEART for cocktail lounges and restaurant and bar services but was refused based on a likelihood of confusion with the Japanese word mark KOKORO. There, like in the Dark Horse Distillery case, the registration noted that the English translation of KOKORO was heart. Nonetheless, the Board ultimately noted that the evidence of record was insufficient to establish that kokoro was the foreign equivalent of “heart.” Kokoro had multiple English translations, only one of which was “heart” (others included “mind,” “spirit,” “mentality,” “thought,” “will” and “intention”). While the translations were somewhat similar, the Board noted they were not exact and thus agreed with the applicant that “heart” and “kokoro” were not foreign equivalents.

Ultimately, many unsuspecting applicants end up spending extra time and money on their trademark filings after receiving a refusal based upon the application of the doctrine of foreign equivalents. The expectation is generally that the marks do not sound alike and do not look alike and most Americans would not consider the meaning (or even know the meaning), but instead would focus simply on the name. When consumers tell friends about the goods or services, they would refer to the given mark as it is actually pronounced, not as it would be pronounced under a different language after being translated.  Nonetheless, the thought is that people are either in America or may eventually come to America who speak the foreign language and may assume that a given English word and its foreign equivalent emanate from the same source. Make sure that the English translation is included in any search for potentially conflicting trademarks.