What Trademark Attorneys Need to Know about Marks in Foreign Languages
Taylor Tieman | April 26, 2022
Approaching a Trademark in a Foreign Language
Representing clients with marks in other languages can sometimes amount to twice the work for you (as the trademark attorney assisting with the mark) due to double the searching, but I’ve found that in most cases, your guidance and navigation through a tricky process can mean twice as much to the client in this type of representation. A client who chooses a foreign language trademark to represent their brand often chooses the mark because it has a particular cultural meaning or the client is trying to evoke something about the culture where that language is spoken. Here are some crucial things to consider from a legal standpoint when working on a trademark in another language.
Doctrine of Foreign Equivalents
The likelihood of confusion “confusingly similar” standard applies to foreign words and their translations under the Doctrine of Foreign Equivalents. The TMEP states:
Under the doctrine of foreign equivalents, a foreign word (from a language familiar to an appreciable segment of American consumers) and the English equivalent may be held to be confusingly similar.
The USPTO is concerned about confusion arising when a consumer translates a term and confuses it for the same term that is trademarked in English. The more direct the translation, the higher the likelihood of potential confusion.
For example, it is widely accepted that the word “Jefa” in Spanish translates to “female boss”; but the term “Chingona” is often used in similar contexts as “Jefa” could mean a “boss” or a “boss-like female” in the sense that she is in charge and taking control. Other translations of the word “Chingona” in different contexts could mean a “confident woman”, a “strong woman,” or “smart woman.” The nuances of how the word is translated often depend very much on how it is being used culturally.
Therefore, it is important when preparing an application for a trademark in a foreign language to search the English translation and other similarly situated terms to ensure that the term can move forward safely in the foreign language or in English.
According to the TMEP, if the mark includes non-English wording, the application must include an English translation of that wording. 37 C.F.R. §2.22(a)(15). It is important to include this translation to save your client an extra processing fee of $100, and potential fees to respond to the Office Action that will be issued by the Examining Attorney. 37 C.F.R. §2.22(c). The USPTO has deemed that some languages are dead and/or obscure, and therefore no translation will be necessary on the application:
Example from the TMEP: Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in news articles), then a Latin term is not considered dead. The same analysis should be applied to other uncommon languages.
In this situation, the assisting attorney would need to ensure that the translation is properly set forth on the application.
Offering Culturally Aligned Representation
As you can see, understanding the origin of your client’s trademark is important to not only the application itself, but also the search and clearance process. You don’t need to necessarily be fluent in the language of the trademark itself, (or even understand the language, for that matter), but knowing both your client’s intention with the mark as well as its real-world translation(s) are imperative to successful representation. Don’t just ask the client for the translation, consider also asking:
- How your client came up with the name/term;
- Why your client chose it.
- What the term means to your client;
- What the term means to their clients/customers.
You’ll need to balance the legal considerations as well as linguistic considerations, here. Ask your client what they intend the trademark or term to mean or portray; knowing this will help you bridge the gap between what the USPTO expects from a legal perspective and what your client understands as far as what their term means. For example, your client could intend for the trademark to mean one thing; but it may translate completely differently via the methods in which the Examining Attorney will attempt to translate the term, by way of “dictionary, Internet, and LexisNexis® evidence.” 1207.01 (b)(vi). In many cases, clients that choose marks in different languages are choosing these names for meaningful, cultural reasons. Because of this, they are often even more attached to the term. For this reason, having a nuanced conversation about the USPTO’s translation requirement (even if they did not intend for it to translate to anything) is important, because having this conversation too late can sometimes cause the client to distrust the process, or even your representation.
Further, it is important to recognize when your client may feel that the odds are stacked against them during this process; I have found that for some clients whose trademarks are in a foreign language, it is even more important to get to know them and their businesses a little better, which will help you to empathize with any possible injustices they may have experienced prior with the legal system, or any preconceived notions they may bring to the table. Some groups have been historically disadvantaged when it comes to the law and availability of diverse legal representation; so when assisting clients it is imperative to acknowledge this with them to create rapport and trust. Learn more about how to improve your ability to connect with and represent clients from other cultures by reviewing Ticora Davis’ session from Alt Legal Connect, “Culturally Relevant Representation.”
Representing clients with foreign language marks may initially seem like more work for you or your team, but in reality, it is a fantastic opportunity to broaden your client base and deepen trust. The doctrine of foreign equivalents is another variation of the likelihood of confusion standard that comes as a surprise to many clients, so offering trustworthy advice and counseling a client through these distinctions in the law will allow you to maintain great relationships and referrals moving forward.