Far From Fluent Making Sense of the Doctrine of Foreign Equivalents

Understanding the trademark law doctrine of foreign equivalents can feel much like an English-language speaker attempting to decipher an article in Welsh: mind-numbing, frustrating, and confounding. This article aspires to be none of those.
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Understanding the trademark law doctrine of foreign equivalents can feel much like an English-language speaker attempting to decipher an article in Welsh: mind-numbing, frustrating, and confounding. This article aspires to be none of those.

This article will begin by showing how the doctrine works in the United States, both in litigation and in proceedings at the United States Patent and Trademark Office (USPTO), with plenty of examples. Then it will dig into the fundamentals of each element, pausing occasionally to wrestle with the doctrine’s assumptions, flaws, and inconsistencies. And it will provide a handy checklist of exceptions that prevent the doctrine from being applied.

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Table of contents

I. Introduction
II. Overview of the Doctrine
A. In General
B. Validity Analysis
i. Basic Principles
ii. Examples and Guidelines
iii. Rationales
C. Confusing Similarity Analysis
i. Basic Principles
ii. Examples and Guidelines
iii. Rationales
III. Nuts and Bolts of the Doctrine
A. Elements of the Doctrine
B. A Guideline, Not a Strict Rule
C. Contains a Foreign Word or Phrase
D. Literal, Direct Translation
i. Exact Equivalents
ii. Evidence of Translation
E. Common, Modern Language
i. Which Languages are Common and Modern, not Obscure and Dead?
ii. Critique and Confusion
a. Debatable Interpretations of Evidence
b. Failure to Meet “Appreciable Number” Standard
c. A Suggestion
F. Ordinary American Purchaser
i. Who is the Ordinary American Purchaser?
a. In General
b. In Cases Where the Mark May be Primarily Geographically Deceptively Misdescriptive
ii. Critique and Confusion
a. Incorrect Standard Quoted in TMEP, Case Law
b. What is the Relevant Group of Ordinary American Purchasers?
c. Must the Relevant Purchaser be Bilingual?
d. Relevance of Foreign Perception
G. “Stop and Translate”
i. When Would Someone “Stop and Translate”?
ii. Critique and Confusion
a. Explanation of Standard Unclear in Case Law
b. “Stop and Translate” is Not Appropriate in Validity Analysis
c. Do Consumers Really Stop . . . And Then Translate?
d. Foreign Terms May Simply Have Different Commercial Impressions than English Terms, Regardless of Translation
IV. Checklist of Exceptions to Applying Doctrine
A. Marketplace Context Suggests Purchasers Would Not Translate Foreign Term
B. Relevant English Translation is Imperfect or Ambiguous
C. Foreign Term is Not Grammatically Correct
D. Foreign Mark is in More Than One Language
E. Foreign Marks Being Compared to Each Other are in Different Languages
F. Foreign Marks Being Compared to Each Other are in the Same Foreign Language
G. Foreign Term Has Become an English Word or is Otherwise Known to English Speakers
H. Foreign Term is a Personal Name or Resembles One
I. Foreign Term and English Term Have Distinct Commercial Impressions
J. Foreign Term is in a Dead or “Highly Obscure” Language
K. Foreign Term is Obscure
L. Foreign Mark Closely Resembles an English Mark or a Descriptive/Generic Term
V. Conclusion