Vetements Group AG (“Vetements”), a Swiss luxury brand that sells expensive, reimagined clothing, recently petitioned the Supreme Court to review a Federal Circuit decision in In re: Vetements Grp. AG, Case Nos. 2023-2050, 2023-2051. There, the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (“TTAB”) decision that a mark (VETEMENTS) was generic and descriptive and had failed to acquire distinctiveness.
In June 2020, Vetements filed two trademark applications for VETEMENTS for use on clothing items, including sweaters, shirts, boots, etc., and online retail services. The United States Patent and Trademark Office (“USPTO”) Examining Attorney refused registration under the doctrine of foreign equivalents. According to the USPTO, foreign words (in this case, the French word VETEMENTS) used in a mark that directly translate to an English word are generic. Vetements appealed to TTAB, which also concluded that the mark was generic and descriptive under the doctrine of foreign equivalents. The TTAB also held that Vetements failed to show that the mark had acquired distinctiveness. Vetements appealed to the Federal Circuit.
In May, the Federal Circuit affirmed the TTAB’s decision that relied on the doctrine of foreign equivalents. The Federal Circuit explained there was evidence to show that enough Americans speak French and were likely to stop and translate the mark from French to English. Two months later, Vetements petitioned for certiorari, arguing that the Federal Circuit misapplied the Supreme Court’s doctrine of foreign equivalents. Vetements’ petition explains that prior U.S. Supreme Court caselaw protects foreign words based on consumers’ perceptions of the mark and not its direct translation.
Vetements’ petition also asks that the Supreme Court clarify a circuit split on how courts determine whether a foreign mark can be a registered trademark. Vetements explained that the Fourth Circuit looks to how a consumer would perceive the mark, whereas the Second and Fifth Circuit use the direct translation of the word. Vetements also argued that while the Federal Circuit has expressed that application of the doctrine of foreign equivalents is not absolute, there are generally few exceptions to the rule, which are unclear.
A decision from the Supreme Court would provide guidance to the USPTO when it reviews applications with foreign words. The Supreme Court’s reversal of the Federal Circuit decision would broaden the scope of U.S. trademark registrations for foreign marks, creating a more subjective test focused on a consumers’ perception. Conversely, if the Supreme Court affirms the Federal Circuit, this will heighten the difficulty in registering a mark using a directly translatable foreign word.
