Suppose that you want to register your trademark that is in a non-English language on goods or services for your business in the United States. Will your non-English language trademark need to be translated to English to determine its registrability? If so, can your English translation trademark be refused registration with the U.S. Patent and Trademark Office? The answer is YES! if the non-English language trademark is translated into English under the doctrine of foreign equivalents and found, for example, generic or merely descriptive when applied to the goods or services.
How does one determine whether their non-English trademark is registerable? By using the doctrine of foreign equivalents, one can determine whether a non-English language trademark is may be refused registration. E.g., In re N. Paper Mills, 64 F.2d 998 (C.C.P.A. 1933). The doctrine of foreign equivalents has been considered in likelihood of confusion refusals “to determine . . . 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); see also 15 U.S.C. § 1052(d) (prohibiting registration when a proposed mark is “likely . . . to cause confusion, or to cause mistake” with another mark).
Has the doctrine of foreign equivalents been considered in genericness or merely descriptive refusals? The doctrine of foreign equivalents has been used to determine if a non-English language trademark is impermissibly generic or descriptive. E.g., In re N. Paper Mills, 64 F.2d 998 (C.C.P.A. 1933). Section 2(e) of the Lanham Act states that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— … (e) [c]onsists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them …”. See 15 U.S.C. §1052. “Descriptive” includes generic terms because a generic term is the “ultimate in descriptiveness,” Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358, 1366 (Fed. Cir. 2018), and is “ineligible for federal trademark registration,” U.S. Pat. & Trademark Off. v. Booking.com B.V., 591 U.S. 549, 551 (2020) (Booking.com). Under the doctrine of foreign equivalents, the non-English language trademark is translated into English and then assessed as to its genericness or descriptiveness. E.g., In re N. Paper Mills, 64 F.2d 998–999.
In a recent case before the United States Court of Appeals for the Federal Circuit (“CAFC”), In Re: Vetements Group AG, 2023-2050, 2023-2052 (Decided May 21, 2025), the CAFC held that the Trademark Trial and Appeal Board (“TTAB”) properly considered the proposed non-English language marks under the doctrine of foreign equivalents before finding the marks generic. In In Re: Vetements Group AG, Vetements Group AG sought registration of the non-English trademark VETEMENTS in standard characters and stylized form for clothing items and online retail store services for the clothing items. The Examining Attorney refused to register the non-English marks because “Vetement” is the French word for “clothing” in English and when applied to the clothing items and online retail store services for clothing items was generic and/or merely descriptive without acquired distinctness. Vetements Group AG appealed the Examining Attorney’s refusal to the TTAB. The TTAB concluded that, after applying the doctrine of foreign equivalents, the marks were generic and merely descriptive without acquired distinctiveness and affirmed the Examining Attorney’s refusal to register the proposed non-English language marks. Vetements Group AG appealed the decision of the TTAB.
On appeal, one of the issues considered by the CAFC was whether the ordinary American purchaser would stop and translate the mark into English. The CAFC found that when “an appreciable number of purchasers” are likely to be aware what the non-English language trademark means in English, such circumstance weighs in favor of translation. Palm Bay, 396 F.3d at 1376-77. The CAFC also considered the context in which the non-English words appear would cause the ordinary American purchaser to take the “VETEMENTS” marks at face value in French (i.e., not to translate). See Palm Bay, 396 F.3d at 1377. The CAFC held that Vetements Group Ag did not identify a sufficient reason that it would be unlikely that the ordinary American Purchaser would stop and translate the word into its English equivalent. In this case, the
CAFC held that the doctrine of foreign equivalents, once applied, from French to English means “clothing”, and that “Vetements” was generic for clothing items and retail store services for such clothing items. The CAFC affirmed the decision of the TTAB.
Is there a limitation on the application of the doctrine of foreign equivalents? In In Re: Vetements Group AG, the CAFC held that unless it is unlikely that the ordinary American purchaser would stop and translate the word into its English equivalent, the doctrine of foreign equivalents applies.
In summary, a trademark that is in a non-English language can be refused registration if it is generic or merely descriptive for the goods and/or services. Under the doctrine of foreign equivalents, the non-English language trademark may be refused registration if the English translation is generic or merely descriptive for the goods and/or services. Therefore, it is recommended that any non-English language trademarks be translated into English and applied to the goods and/or services to determine if generic or merely descriptive before trying to register the non-English language trademarks in the United States.
