What do Ugg boots, Chupa Chups lollipops, and the Tang Soo Karate School in Dickson City, Pennsylvania have in common? Probably not much, except that each has faced a lawsuit involving the registration of its foreign-language trademarks. The review of non-English words in trademark applications holds increasingly significant importance in today’s global economy. Unfortunately, however, courts have struggled to apply consistently the controversial doctrine of foreign equivalents.
A Brief Background
The basis for trademark law is the desire to guard against consumer confusion by assisting consumers in identifying a product’s source. Per the Abercrombie spectrum, a metric of distinctiveness established in a seminal 1976 Second Circuit case, trademarks and service marks that are “arbitrary,” “fanciful,” or “suggestive” may be registered. This is because consumers will identify marks such as “Kodak” (fanciful), “Apple Computers” (arbitrary), and “Greyhound” (suggestive) as inherently distinctive of source. “Descriptive” marks, i.e., marks that describe a characteristic of the product on which the mark is placed, may be registered only with a showing of “secondary meaning.” That is, a mark that describes the quality of a product (e.g., “Bran-Nut” for cereal containing bran and walnuts) will gain registration only if the consuming public has attached a unique significance to the descriptive term as a source of the product and not merely a description of it (e.g., “Best Buy”). Finally, “generic” marks (e.g., “aspirin”) are never registrable because registration would preclude competitors from using the word on their products, thereby inhibiting competition and causing consumer confusion.
So where do foreign language marks fit on the Abercrombie spectrum? Using the doctrine of foreign equivalents, courts translate non-English words into English to determine their place on the Abercrombie spectrum. The Federal Circuit has stated that the doctrine “should be applied only when it is likely that the ordinary American purchaser would stop and translate [the word] into its English equivalent.” Courts have made clear that the doctrine is not a rule, but merely a guideline to help determine whether a mark is registrable. In applying this guideline, then, courts are tasked with considering the effect of non-English marks on the American consuming public familiar with the foreign language.
Why Have the Doctrine at All?
As the U.S.P.T.O.’s Trademark Trial and Appeal Board explained, the doctrine of foreign equivalents “extends the protection of the [Lanham] Act to those consumers in this country who speak other languages in addition to English.” Thus, the doctrine is a function of a globalized marketplace and diverse society such as the United States. It seeks to minimize the confusion of consumers who would be confused by the use of a “descriptive” or “generic” non-English word to designate the source of a product.
At first glance, then, the doctrine seems to make sense, especially in light of the consumer-based justifications for trademark law—if marks are supposed to function as source identifiers, then any mark that would be “descriptive” or “generic” to a sizeable portion of the public ought not to be registrable. The argument goes, if Producer X can register “ACQUA” as a trademark for its bottled water, then it will preclude other producers from using the word “acqua” on their product label. This will confuse (in this case, Italian-speaking) consumers as to the source of products and obstruct a competitive marketplace.
Some commentators, however, do not paint such a rosy picture of the current state of the doctrine of foreign equivalents. The precarious “guideline” nature of the doctrine means that courts have relatively wide discretion in selecting how and when to apply the doctrine, and to which languages it will apply. For instance, dead or obscure languages need not be translated. But which languages are obscure? Is there a threshold number of people that must be met to deem a language not obscure? Moreover, does it really make sense to cause such a commotion and prevent registration of marks that, although might confuse 0.1% of the population (for instance, the Greek-speaking population of over 300,000 people)?
Foreign Equivalents in Practice
To see how the doctrine of foreign equivalents operates in practice, consider Enrique Bernat F., S.A. v. Guadalajara, Inc., 210 F.3d 439 (5th Cir. 2000). Before the Fifth Circuit was the issue of whether Defendant’s “CHUPA GURTS” mark infringed on Plaintiff’s “CHUPA CHUPS” mark for lollipops. The court determined that “chupa” was generic for lollipops in Spanish slang, or more formally, a form of the verb “chupar” (meaning “to lick”). Referring explicitly to the goal of protecting Spanish-speaking consumers from confusion, the court held that only “Chups” is registrable, and “Chupa” is not. Because so many Americans speak or understand basic Spanish words, the Fifth Circuit seemed not to struggle at all in arriving at this conclusion.
Also consider the recent case of In Re Aquamar, Inc., 115 U.S.P.Q.2d 1122 (P.T.O. June 25, 2015) (not precedential). Aquamar, Inc. appealed the determination of the Examining Attorney that its mark “MARAZUL” was likely to cause confusion with the registered mark, “BLUE SEA.” The T.T.A.B. affirmed the Examining Attorney’s decision, noting that consumers would be likely to “stop and translate” the mark (again, because of the prevalence of Spanish speakers in the market) and that “the equivalency in meaning of the marks outweighs the differences in how the marks look and sound.”
Contrast the approaches in the CHUPA and MARAZUL cases with an odd 2006 European Court of Justice case. In the Matratzen case, the ECJ held that “MATRATZEN” (meaning “mattress” in German) could be registered in Spain for mattresses. On the Abercrombie spectrum, this mark most certainly would be “generic” once translated using the doctrine of foreign equivalents. In other words, it is highly unlikely that one could register MATRATZEN in the U.S. Of course, one might think that given the plethora of languages in the European Union, European courts would be even more willing than American courts to apply a doctrine of foreign equivalents so as to protect against confusion across (fairly permeable) European national borders. Because of this, the Matratzen case has faced strong criticism. One should not be surprised to see a shift or evolution in the European doctrine of foreign equivalents in the future.
Future of the Doctrine?
Issues involving the registration of non-English words will only surge in importance with the growth of international commerce. One trademark attorney already has noted the quantitative increase in foreign-language marks in the United States between 1998 and 2008. While the merits of the doctrine of foreign equivalents are debatable, this author believes that Europe would benefit from an adoption of the American doctrine of foreign equivalents, and that the American doctrine would benefit from being more rule-like, rather than persisting as a “guideline.”
Thomas Merante is a J.D. candidate, 2017, at NYU School of Law.