Do any of your clients use a foreign language trademark? If so, you need to understand the doctrine of foreign equivalents. The Trademark Trial and Appeal Board (TTAB) has published a number of precedential opinions developing the doctrine, under which foreign terms are translated into English before infringement or descriptiveness analysis. Anne Gilson LaLonde, author of Gilson on Trademarks, clarifies this confusing doctrine and gives practical guidance for cases involving foreign equivalents. She writes:
Your competitor sells cat toys under the mark FRENCH FRIES. Can you use the mark POMMES FRITES for your cat toys without infringing? Could you use the mark POMMES FRITES to sell your frozen French fries? The doctrine of foreign equivalents would likely block both of those uses. Under the doctrine, foreign words may be translated into English before undergoing trademark law analysis. It applies in two circumstances, as shown in the examples above: First, foreign terms may be found to be confusingly similar to their English translations, or equivalents, as with FRENCH FRIES and POMMES FRITES. Second, words that are the foreign translations, or equivalents, of generic or descriptive terms in English may themselves be found to be invalid trademarks, as with POMMES FRITES as a mark for French fries.
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The Board holds that the doctrine of foreign equivalents should be applied when the ordinary American purchaser knowledgeable in English and the relevant foreign language would stop and translate the term or phrase into English. In its Spirits International decision, for example, the Board found that the ordinary American purchaser knowledgeable in Russian would translate MOSKOVSKAYA as meaning “of or from Moscow.” That panel held that, “because the mark isin Russian, a common, modern foreign language, we must consider that an appreciable segment of the buying public will speak or understand this language.” According to theBoard, then, the “ordinary American purchaser” is the same as “the ordinary Americanpurchaser who is knowledgeable in English as well as the pertinent foreign language.”
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Even if the two marks have the same meaning in English, they will not necessarily be found to be confusingly similar. This is true when comparing two English language marks as well, in a typical trademark infringement case; similarity or even identity of marks does not require a finding of likelihood of confusion. As in all cases where likelihood of confusion is an issue, courts will look at other factors, including type of products, channels of trade and mark strength. Similarity is a crucial consideration, however, and often determinative.
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