Email This Post Email This Post | Print This Post Print This Post | PDF File Download

U.S. Trademarks Employing Foreign Terms


© 1994 by Charles E. Bruzga and Caterina Civera-Tomaselli, New York, New York.

When a client wishes to use a foreign term as a trademark in the U.S., an advising attorney should consider, not only, for instance, the sight and sound [1] of the proposed trademark, but also its English meaning as would be perceived by U.S. consumers conversant in the foreign language in question. The meaning of the proposed trademark is considered under the so-called doctrine of foreign equivalents, wherein foreign words, at least from non-obscure languages, [2] are translated into their English equivalents and evaluated according to customary trademark standards. [3]

To illustrate the doctrine of foreign equivalents, this article presents examples of foreign terms in key trademarks contexts, such as determining whether a mark is invalid as generically describing the goods or services sought to be trademarked, or is invalid for creating a likelihood of confusion with an existing English-language mark for similar goods or services. For the most part, the trademark examples discussed either relate to commonplace goods or services, or are well-known or famous, to facilitate understanding.

I. Avoid Terms Whose English Meaning Generically Defines the Goods or Services

An English-language term, such as “WINE”, cannot be exclusively appropriated by a merchant in the U.S. as a trademark; otherwise the merchant would be given an unfair monopoly over a generic term that all competitors should be free to use. [4] This principle extends to foreign terms whose English meaning would be perceived by U.S. consumers who are conversant in the foreign language in question as generically defining goods or services. Thus, the Polish-language term “VINKA” for wine cannot be exclusively appropriated by a merchant for use as a trademark; competitors should be free to also refer to their wines as “VINKA.” [5] The practice of considering the English meaning of a foreign-language mark is well-established in U.S. law under the above-mentioned doctrine of foreign equivalents, as shown by the cases discussed herein.

The foregoing term VINKA, and examples of other foreign terms that have been refused trademark protection, are noted in the following table:

Marks that Generically Define Goods or Services are Invalid:

Mark English Meaning Goods or Services
VINKA [6] Wine (Polish) Wine
KABA [7] Coffee (Serbian or Ukrainian) Coffee
[8] Oriental daily news (Chinese) Newspapers

II. Avoid Terms Whose English Meaning Merely Describes the Goods or Services

An English language term such as “TASTY” for food merely describes a quality or feature of food. Under U.S. law, all competitors should be free to use such a descriptive term “tasty” for food they sell. Thus, the Italian-language mark “SAPORITO,” which in English means “tasty,” merely describes a quality or feature of sausage, and cannot be trademarked for sausage. [9] The foregoing term SAPORITO and samples of other foreign terms that have been refused trademark protection are noted in the following table:

Marks that Merely Describe Goods or Services are Usually Invalid:

Mark English Meaning Goods or Services
SAPORITO [10] Tasty (Italian) Sausage (food)
LE SORBET [11] The fruit ice (French) Restaurant services,
including serving fruit ices
TAMARI [12] Soy sauce (Japanese) Nuts flavored with
soy sauce
PIZZE FRITTE [13] Fried bread buns
(Italian)
Fried bread buns

In somewhat rare circumstances, an otherwise descriptive, foreign-language mark can be protected in the U.S. This may occur where, through such means as extensive advertising and use of the mark, consumers come to view the mark as indicating that the trademarked goods or services originate only from the owner of the mark. Such a source-identifying meaning of a mark, created through extensive advertising and use, for instance, is known as “secondary” meaning. Thus, although the mark “VOLKSWAGEN”, meaning “peoples’ car” in German, was held descriptive of a low-priced popular car, it was nonetheless protected since it had acquired a source-identifying, or secondary, meaning to consumers. [14] This is noted in the following table:

Secondary Meaning Avoids Mere-Descriptiveness Infirmity:

Mark English Meaning Goods or Services
VOLKSWAGEN [15] Peoples’ car
(German)
Automobiles

III. Fanciful (i.e., Non-Descriptive) Marks are Generally the Strongest

“Fanciful” marks have a meaning so wholly unrelated to the trademarked goods or services that a consumer would fail to find it descriptive of such goods or services. Fanciful marks, accordingly, are stronger, and easier to protect, than marks merely describing a quality of the trademarked goods or services. This principle applies, not only to English-language marks, but foreign-language marks as well. This is illustrated by the foreign-language mark “GIOIA”, meaning “joy” in Italian, for pasta and related non-beverage retail food products. The meaning of the work “joy” is quite unrelated to the trademarked pasta and related food products. A federal district court refused to find that the GIOIA mark was descriptive-in effect finding it fanciful-, and enjoined another merchant from using the mark GIOIA for wines. [16] The foregoing and other fanciful marks that were held valid are noted in the following table:

Fanciful Marks are Generally the Strongest:

Mark English Meaning Goods or Services
GIOIA [17] Joy (Italian) Pasta and related foods
DEL MONTE [18] From the mountains (Spanish) Canned, dried or preserved food products
PIZZERIA UNO [19] Pizza one (Italian-
“one” merely being an abstract number and lacking any attribute such as “best”)
Restaurant services,
including serving pizza

IV. “Foreign Article + English Noun” Terms: Generic or Descriptive vs. Fanciful

Although Courts never allow registration of generic marks, they may allow registration of a generic English noun in combination with a foreign article (e.g., “la”, French for “the”). This is based on the principle that such an incongruous combination gives the mark a fanciful flavor, thus rendering it registrable.

A good illustration is found in the term LA YOGURT, which the U.S. Trademark Office Trial and Appeal Board (“the Board”) allowed to register. “Yogurt” is a generic English noun, and was held by the Board to differ from the French generic term for yogurt, which is spelled differently (e.g. “yogourt”). Such English term, coupled with the French article “la”, became unique enough to be perceived by the general public as a distinctive commercial term, and therefore registrable. The Board also determined that such registration did not infringe on competitors’ rights, since they are not restricted from using the generic term “yogurt” without the French article. [20] For most “Article + Noun” terms registered by the U.S. Trademark office see the following table:

Article + Noun Terms that were Granted Registration

Mark English Meaning Goods or Services
LA YOGURT [21] Yogurt The combination of an English generic noun and French article creates the impression of a brand name rather than a descriptive term
LE CASE [22] Ladies’ briefcases,
jewelry boxes, etc.
Combination of
English and French create a distinguishing commercial impression

Note, in contrast, the term LE SORBET, which was denied registration because too generic. [23] “Le sorbet” is also the correct generic french term and article, and as such does not enjoy the privileges given to an English noun, coupled with an incorrect French article. Further examples of “Article + Noun” terms that were refused registration by the U.S. Trademark Office are noted in the table below:

Article + Noun Terms That were Denied Registration

Mark English Meaning Goods or Services
LA LINGERIE [24] Lingerie “La Lingerie” is the
Common French term for Lingerie, and in English it
is the descriptive name
for central characteristic
of applicant’s service
LE SORBET [25] Ice Creams Generic French term for “ice cream”
LE CROISSANT
SHOP [26]
Croissants Term not sufficiently
unique to be more than merely descriptive

The attorney should be warned, however, that while the law relating to a foreign article + English noun mark is clear, factual issues may not be. For instance, the dissenting opinion of the U.S. Trademark Trial and Appeal Board (“Board”) in the “LA YOGURT” case, discussed above stated, among other things, that there were many types of spelling of the word “yogurt” that were identical in both English and French. This gave the Board the power to decide that any spelling of “yogurt” could be considered generic, regardless of the correctness of the article placed before it, [27] It is therefore very important that any foreign article + English noun combination be as fanciful as possible.

V. Avoid Terms Whose English Meaning Would Likely Be Confused With an Existing English-Language Mark for Similar Goods or Services

A foreign term whose English translation would likely be confused with an English-language mark for similar goods or services will be rejected by the courts as invalid. Thus, registration of the Spanish-language mark EL SOL for footwear, T-shirts, pants, shorts, and tops was denied under the doctrine of foreign equivalents, the mark being held confusingly similar to the English-language trademark SUN, employed for footwear. [28]

The foregoing, and other, foreign-language marks deemed invalid because their English meanings would likely be confused with existing English-language marks for similar goods or services are noted below:

Avoid Terms Whose English Meaning Would Likely Be Confused with an Existing English-Language Mark for Similar Goods or Services:

Mark English Meaning Goods or Services
EL SOL [29] Sun (Spanish) SUN
LUPO [30] Wolf (Italian) WOLF
BUENOS DIAS [31] Good Morning
(Spanish)
GOOD MORNING
EL GALLO [32] The rooster
(Spanish)
OUR
ROOSTER

VI. Alternative Ways to Protect Marks: Show Translation Discrepancies or Substantial Misspellings

The owner of a foreign-language trademark which is at risk of being considered generic or merely descriptive has some options available. The owner can sometimes successfully retain rights in the mark by showing that its English meaning fails to clearly embrace a generic or descriptive term. Thus, the owner of the Spanish-language trademark “LA POSADA,” for lodging and restaurant services, was able to register such mark, even though “POSADA” translates as a lodging-house, inn, small hotel or lodging, [33] and “LA POSADA,” as “the inn.” The owner, however, was able to show that “POSADA” has the alternative meaning of a person’s home or dwelling. Since “LA POSADA,” thus, “has a connotative flavor [or meaning] which is slightly different from that of the words ‘the inn’ “, [34] registration was allowed.

Another option available to a trademark owner whose foreign-language mark is at risk of being considered generic or merely descriptive is to alter the spelling of the mark so that it would not be recognized as generic or descriptive by those conversant in the language in question. The alteration, however, must be quite substantial. Hence, insufficient alteration was found in the trademark “AIROMATIQUE”, for toilet water (e.g. cologne). Such mark was held to be the mere misspelling (or phonetic equivalent) of the French term “AROMATIQUE”, whose English equivalent, “AROMATIC,” means fragrant or spicy. [35] As such, the mark “AIROMATIQUE” was considered merely descriptive of toilet water, despite the trademark owner’s counter-argument that the mark “AIROMATIQUE” suggests, instead, the method of dispensing the toilet water as automatically by air (i.e. a spray). [36]

Conclusion

An attorney evaluating the validity of a U.S. trademark that uses a foreign-language term should be cognizant of the doctrine of foreign equivalents. Under the doctrine, foreign terms are translated into their English equivalents, and then evaluated in regard to customary trademark standards. Thus, to be valid, the English equivalent of a foreign-language mark should not generically define the trademarked goods or services, or be merely descriptive of such goods or services. Additionally, to be valid, an English-language equivalent of a foreign term should not create a likelihood of confusion with an existing English-language mark for similar goods or services.

 

[1] E.g., in re SarkH, Ltd., 721 F.2d 353, 354, 220 USPQ 111, 113 (Fed. Cir. 1983) (sight and sound are relevant factors in assessing likelihood of confusion).

[2] It has been cogently argued that the doctrine of foreign equivalents fails to apply to non-English language terms from an obscure or “dead” language. See, generally, e.g., 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAlR COMPET1TION, § 12.13[1], at 12-81 (3d ed. 1992).

[3] Volkswagenwerk Aktiengesellschaft v. Church, 256 F. Supp. 626, 629 150 USPQ 338, 340 (S.D. Cal. 1966), affd, 411 F.2d 350, 161 USPQ 769 (9th Cir. 1969; accord Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1531, 224 USPQ 185, 191 (4th Cir. 1984).

[4] See, e.g., In re Le Sorbet, Inc., 228 USPQ 27, 30 (TTAB 1985) (citing authorities).
571

[5] Ex parte Monarch Wine Company of Georgia, 117 USPQ 454 (Comm’r of Patents 1958).

[6] Id.

[7] In re Hag Aktiengesellschaft, 155 USPQ 598 (!TAB 1967).

[8] In re Oriental Daily News, 230 USPQ 637 (!TAB 1986).

[9] In re Geo. A. Hormel & Company, 227 USPQ 813 (!TAB 1985).

[10] Id.

[11] Supra note 4, 228 USPQ at 27-28.

[12] In ‘re Westbrae Natural Foods, Inc., 211 USPQ 642 (TIAB 1981).

[13] In re Zazzara, 156 USPQ 348 (TIAB 1967).

[14] Volkswagenwerk Akliengesellschaft v. Church, 256 F. Supp. 626, 629, 150 USPQ 338, 340 (S.D. Cal. 1966), affd, 411 F.2d 350, 161 USPQ 769 (9th Cir. 1969).

[15] Id.

[16] Gioia Macaroni Company, Inc. v. Joseph Victori Wines, 205 USPQ 986 (E.D.N.Y. 1979).

[17] Id.

[18] Cf. California Packing Corp. v. Tillman & Bendell, Inc., 40 F.2d 108 (C.C.P.A. 1930) (upholding right of owner of DEL MONTE trademark for canned, dried or preserved food products to oppose registration of DEL MONTE for canned coffee-a beverage).

[19] Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1534-35, 224 USPQ 185, 192·93 (4th Cir. 1984).

[20] In re Johanna Farms Inc.• 8 USPQ 2d 1408 (TIAB 1988).

[21] Id.

[22] In re Universal Package Corp.• 222 USPQ 344 (TIAB 1984).

[23] In re Le Sorbet, Inc., 228 USPQ 27 (!TAB 1985).

[24] In re Bonni Keller Collections, 6 USPQ 2d 1224, (TIAB 1987).

[25] Supra note 23.

[26] In re France Croissant Ltd., 1 USPQ 2d 1238 (TIAB 1986). 1950).

[27] Supra note 20.

[28] In re Hub Distributing, Inc., 218 USPQ 284 (ITAB 1983).

[29] Id.

[30] In re Ithaca Industries, Inc., 230 USPQ 702 (ITAB 1986).

[31] In re American Safety Razor Co., 2 USPQ2d 1459 (ITAB 1987) (similarly marketed goods: bar soap and shaving cream).

[32] In re Maclin-Zimmer-McGill Tobacco Co., Inc., 262 F. 635 (D.C. Cir. 1920) (identical goods: both tobacco).

[33] In re Pan Tex Hotel Corp., 190 USPQ 109, 109 (ITAB 1976).

[34] ld. at 110.

[35] In re Jacq1.!eline Cochran, Inc., 196 USPQ 715, 716 (ITAB 1977).

[36] ld. at 715.