Not Lost in Translation: Federal Circuit Clarifies Application of the Doctrine of Foreign Equivalents

Written by:Justin J. Gillett and Oren J. Rosenberg

IN RE: VETEMENTS GROUP AG

Before Prost, Wallach, and Chen.  Appeal from the Trademark Trial and Appeal Board.

Summary: A party opposing application of the doctrine of foreign equivalents has the burden to show that the ordinary American purchaser would be unlikely to translate a foreign word in a trademark into English.

Vetements Group filed applications to register variations of VETEMENTS as marks on the Principal Register in connection with various clothing items and online clothing-related retail services.  “Vêtements” is French for “clothing.”  The examining attorney refused the applications, finding the marks were generic.  On appeal, the Trademark Trial and Appeal Board considered the doctrine of foreign equivalents.  When that doctrine applies, courts translate foreign words in a mark into English before testing the mark for genericness and other issues.  The Board found the doctrine of foreign equivalents applied because the ordinary American purchaser would likely stop and translate the marks into English.  The Board therefore affirmed the examining attorney’s refusal to register the marks.

On appeal, the Federal Circuit affirmed.  The court identified non-exclusive “core principles” relevant to analyzing whether the ordinary American purchaser would stop and translate a mark into English.  First, it explained that “the burden is on the party opposing translation to show that it is unlikely the ordinary American purchaser would stop and translate the word into its English equivalent.”  The court ruled that Vetements Group did not satisfy that burden.  Second, “[a]s long as an appreciable number of Americans, from the U.S. population as a whole, are capable of translating the word, the word likely will be translated.”  The court found that an “appreciable” number of Americans are capable of translating the word VETEMENTS from French into English.  Third, courts consider whether, in context, an American purchaser of ordinary sensibilities who is capable of translating the word would do so.  The Federal Circuit found it unlikely that purchasers would take the marks at face value (without considering their foreign-language meaning) because the context is clothing and the proposed marks mean clothing.  Thus, the court held that the doctrine of foreign equivalents applied.  The court then ruled that substantial evidence supported the Board’s finding that the marks were generic.

Editor: Sean Murray