Trademark Foreign Words
In today’s global marketplace, where businesses are increasingly crossing borders, being able to trademark foreign words has become a crucial consideration for companies seeking to protect their brand identity. To trademark a foreign word, however, isn’t as straightforward as registering an English term. The process involves navigating a complex landscape of legal requirements and linguistic nuances, particularly in the United States. This blog post delves into the intricacies of trademarking foreign words, offering insights into the key considerations that applicants must keep in mind.
What is a Trademark?
A trademark is a distinctive sign, symbol, or expression used to identify and distinguish the goods or services of one entity from those of others.

The importance of trademarks cannot be overstated. They play a critical role in building brand recognition and trust among consumers. By securing a trademark, a business can protect its brand from infringement and ensure that its products or services are easily identifiable in the marketplace.
The USPTO and English Translations
When filing a trademark application in the United States, the U.S. Patent and Trademark Office (USPTO) requires an English translation of any foreign word included in the mark.
The rationale behind this requirement is straightforward: the USPTO needs to assess potential conflicts with existing trademarks to prevent consumer confusion. Without a translation, it would be challenging to determine whether a trademark foreign word is too similar to an existing mark or if it conveys a meaning that could be misleading to consumers.

The Doctrine of Foreign Equivalents
One of the key considerations when an applicant wants to trademark foreign words is the doctrine of foreign equivalents. This legal principle holds that a foreign word from a language familiar to American consumers may be considered confusingly similar to its English equivalent. The doctrine is applied when the English translation of the foreign word is literal and direct, and no contradictory evidence suggests different meanings.
For example, the mark “MARCHE NOIR” for jewelry could be deemed confusingly similar to “BLACK MARKET MINERALS” for retail jewelry and mineral store services, as “MARCHE NOIR” translates to “black market” in English. Another example is the mark “LUPO” for men’s and boys’ underwear, which could be confused with the English word “WOLF” used for various clothing items, as “LUPO” is the Italian word for “wolf.”
Foreign Equivalents of Descriptive English Words
When it comes to descriptive terms, the rules state: a foreign equivalent of a merely descriptive English word is just as unregistrable as the English word itself.

The USPTO will reject trademark applications for foreign words that are descriptive of the goods or services they represent, just as they would for English terms.
For instance, the term “AYUMI,” along with its Japanese-character equivalent, was held to be merely descriptive for footwear. The evidence, including the applicant’s own admissions, indicated that the primary meaning of the mark is “walking.” As such, the foreign term was considered descriptive and ineligible for registration.
Surnames and Foreign Meanings
A key consideration to trademark foreign words is how the USPTO assesses whether a term is primarily just a surname, particularly if it holds meaning in a foreign language. The examining attorney must evaluate the term’s significance in that foreign language, specifically from the viewpoint of American consumers who may be familiar with it.

In the In re Isabella Fiore case, the Board determined that the term “FIORE,” which is the Italian word for “flower,” is not just a surname. The applicant had provided evidence showing that Italian is a widely spoken language in the United States, meaning many people would recognize the word “Fiore” as “flower.” Since Italian is a major and modern language, not obscure, the Board concluded that “FIORE” is the kind of term that potential customers would naturally translate, and there was no doubt that people would understand it as the Italian word for “flower.”
The Importance of a Trademark Search
Before attempting to trademark a foreign word, it’s crucial to conduct a comprehensive trademark search. This step is essential in identifying potential conflicts with existing trademarks and ensuring that your application has the best chance of success.
A comprehensive trademark search involves several components:

Federal & State Trademarks Databases: It’s vital to search both federal trademark and state trademark databases to ensure that your desired mark isn’t already registered or pending registration by another entity.
Common Law Databases: Common law trademarks are unregistered marks that are still protected based on their use in commerce. Searching common law databases is important to uncover any existing marks that could pose a conflict, even if they aren’t formally registered.
Similarity Analysis: A thorough search also involves analyzing similarities in Sound, Appearance, and/or Meaning between your desired trademark and existing marks. It’s also essential to consider related goods or services that could lead to consumer confusion.

总结 (Zǒngjié)
В заключение
要約すると (Yōyaku suruto)
Kwa muhtasari
Zusammenfassend
En resumen
In Summary…
To trademark a foreign word or words in the U.S. is complex, requiring careful attention to legal principles like the doctrine of foreign equivalents, the handling of descriptive foreign terms, and how foreign meanings impact surnames. Conducting a thorough trademark search is crucial to avoid conflicts and strengthen your application. Seeking professional guidance can help navigate these challenges and improve your chances of a successful registration.