TMEP § 809
An application to register a mark that includes non-English wording must include an English translation of that wording. 37 C.F.R. §2.32(a)(9); In re Advanced New Techs. Co., Ser. No. 86832288, 2023 TTAB LEXIS 2, at *2-3, *20 (2023) (affirming the examining attorney’s requirement for an English translation of the applied-for mark comprising the term ZHIMA where the evidence established that ZHIMA was used and recognized as a transliteration of the Chinese characters for the word for "sesame"). This requirement also applies to compound word marks comprised of two or more distinct words (or words and syllables) that are represented as one word, in which one or more of the words in the mark appears to be non-English wording that would clearly be perceived as a distinct word(s) within the compound. For example, if the mark is GRINÇANTCOMPUTERS, the commercial impression is that the mark is comprised of the words GRINÇANT and COMPUTERS. In such a case, the application must include a translation of the French word GRINÇANT, which means "creaking" in English. If, however, the combination either suggests a single word or conveys a commercial impression other than a mark comprised of two separate words, no translation of the non-English portion should be required. Thus, if the mark is FELIZCITY, the commercial impression is that the mark is a play on the word "felicity" and no translation of the Spanish term "feliz" (which means "happy" in English) is required. See TMEP §809.01 regarding the procedure for examining applications for marks with non-English wording that do not include an accurate translation.
Similarly, an application for a mark that comprises non-Latin characters must include a transliteration of those characters, and either an English translation or a statement that this portion of the mark has no meaning in English. 37 C.F.R. §2.32(a)(10). A transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters. Examples of statements translating and transliterating a word in non-Latin characters are as follows:
The non-Latin characters in the mark transliterate to Asahi and this means "Rising Sun" in English. or The non-Latin characters in the mark transliterate to Weidamei and this has no meaning in a foreign language.
The examining attorney must require the applicant to submit a statement of translation/transliteration if an application does not include an accurate translation and/or transliteration for any non-English wording or non-Latin characters in the mark. 37 C.F.R. §2.32(a)(9)–(10).
When an application or certificate of registration includes a translation, both the non-English wording and the English translation will appear in the records of the USPTO. See TMEP §809.03 regarding the publishing of the translation/transliteration statement in the Trademark Official Gazette and the inclusion of such statement on the registration certificate.
In a TEAS Plus application, if the mark includes non-English wording, the initial application must include an English translation of that wording. 37 C.F.R. §2.22(a)(15). If the mark includes non-Latin characters, the application must include a transliteration of those characters. 37 C.F.R. §2.22(a)(16). If the applicant does not meet these requirements, the applicant must pay a processing fee per class to have the application examined as a TEAS Standard application. See TMEP §819.01(m) for further information on translation and transliteration statements in TEAS Plus applications.
See TMEP §809.01(b) regarding the limited exceptions to the requirement to provide a translation of foreign wording in the mark.
To properly examine applications with non-English wording, the translation and transliteration of the non-English wording must be determined prior to performing a search of the mark. In re Advanced New Techs. Co., Ser. No. 86832288, 2023 TTAB LEXIS 2, at *19 (2023). This is critical because the foreign equivalent of an English term may be regarded in the same way as the English term for purposes of determining descriptiveness, requiring a disclaimer, and citing marks under Trademark Act §2(d) (see, e.g., TMEP §§1207.01(b)(vi), 1209.03(g)). In re Advanced New Techs. Co., 2023 TTAB LEXIS 2, at *19.
Therefore, if there is no translation and/or transliteration in the initial application, the examining attorney should ascertain the meaning of non-English wording before searching the mark.
The examining attorney may obtain the meaning of non-English wording through sources such as foreign language dictionaries, research databases, and third-party websites. See In re Advanced New Techs. Co., 2023 TTAB LEXIS 2, at *20. The examining attorney may also consult the Trademark Librarian or the Translations Branch, as appropriate.
If research by the examining attorney, the Trademark Library, and/or the Translations Branch indicates that the term has no meaning or no clear and exact equivalent in a foreign language, although no inquiry regarding the meaning in a foreign language appears necessary, the examining attorney still has the discretion under 37 C.F.R. §2.61(b) to make such an inquiry. If no inquiry is made, the examining attorney must enter a Note to the File (also referred to as a Public Note or Notation to File) in the record indicating that the term was checked for a translation. In such cases, a statement regarding meaning must not be entered for publishing in the Trademark Official Gazette. See TMEP §809.01(a) regarding when an inquiry is made.
If the examining attorney determines the meaning of the non-English term(s), the examining attorney must search the terms as they appear in the application, the transliterated terms, and the English translation(s) for the terms, as applicable. The examining attorney must also require (under 37 C.F.R. §2.61(b) ) that an accurate translation be made of record by the applicant using the researched translation or other accurate translation provided by applicant. If the applicant disputes a translation obtained through online resources, the examining attorney should supplement the record with evidence from the Trademark Librarian and/or the Translations Branch.
If the translation is provided or supplemented after the examining attorney has conducted a search for conflicting marks, the examining attorney must conduct a new search of the transliterated terms and/or the English translation(s) for the terms, as applicable.
If it is necessary to make a separate inquiry regarding the meaning of non-English wording, the examining attorney should provide the applicant with the correct format for a translation or transliteration statement. See TMEP §809.03. If a general inquiry is made regarding meaning under 37 C.F.R. §2.61(b) (i.e., whether the term has significance in the relevant trade, any geographical significance, or any meaning in a foreign language), the applicant’s response may not be in the correct format for the translation or transliteration statement. When an applicant’s response to an inquiry regarding the meaning of non-English wording includes statements that are not related to the translation or transliteration of such wording, the examining attorney must ensure that only statements regarding the translation or transliteration are entered in the relevant Trademark database using the appropriate format for inclusion on any registration certificate that may issue. See TMEP §809.03.
Similarly, if the applicant responds to an inquiry regarding non-English wording that "the mark has only trademark significance," "the mark is a coined term," or in some similar manner, the examining attorney must not enter the statement in that format in the Trademark database. Instead, the examining attorney must ensure that the statement is reformatted appropriately, to reflect that the wording has no meaning in a foreign language, and entered in the relevant Trademark database. See TMEP §809.03. It is not necessary to issue an examiner’s amendment in such cases.
There are three limited exceptions to the general rule requiring that all foreign wording be translated. See TMEP §§809.01(b)(i)–809.01(b)(iii).
It is generally unnecessary to provide a translation of a foreign term if the term appears in an English dictionary (e.g., croissant, fiesta or flambé). However, if a term that appears in the English dictionary appears in a mark as part of a foreign idiomatic phrase or other unitary expression, a translation of the idiomatic phrase or unitary expression is required. The translation must not break the phrase into its individual word elements or translate only the individual words that do not appear in the English dictionary. Such a translation would serve no useful purpose because it would not convey the true commercial impression of the phrase.
Example: If the mark included the phrase "la fiesta grande," an appropriate translation would be "the great celebration" or possibly "the great fiesta." It would be inappropriate to translate only the individual foreign elements "la" and "grande." The ultimate goal is to provide a translation that reflects the true meaning of the non-English wording in the mark and the commercial impression made by the entire phrase. See TMEP §809.02 regarding equivalency in translation.
It is generally unnecessary to provide a translation of foreign articles or prepositions, such as "de," "le," "la," or "il," when combined with English terms, because their meaning is generally understood and, in this context, they are being used to convey an impression different from their foreign meaning. For example, in the mark "LE CASE," it is unnecessary to translate "LE."
It is generally not necessary to translate words from dead or obscure languages. Cf. Gen. Cigar Co. v. G.D.M. Inc., 988 F. Supp. 647, 660-61, 45 USPQ2d 1481, 1491-92 (S.D.N.Y. 1997) (finding applicant had no obligation to disclose that the term COHIBA for cigars means "tobacco" in the language of the Taino Indians in the Dominican Republic, because cigar smokers in the United States would not be aware of such a meaning). See TMEP §1207.01(b)(vi) and §1209.03(g) regarding the applicability of the doctrine of foreign equivalents to words from dead or obscure languages. The determination of whether a language is "dead" must be made on a case by case basis, based upon the meaning that the term would have to the relevant purchasing public.
Example: 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.
The translation that should be relied upon in examination is the English meaning that has significance in the United States as the equivalent of the meaning in the non-English language. The following are examples of equivalency in translation:
Determining the appropriate translation often requires consideration of the relevant context in which the mark is used, including the mark’s meaning in relation to the goods and/or services or in relation to the applicant itself. See In re Advanced New Techs. Co., Ser. No. 86832288, 2023 TTAB LEXIS 2, at *19-21 (TTAB 2023) (The Board, in determining the applied-for mark ZHIMA was used and recognized as a transliteration of the Chinese characters for the word "sesame" and required a translation, reviewed evidence including the context of applicant’s use of the mark indicating that "[t]he original applicant, Alibaba Group Holding Limited, [sought] to use and register ZHIMA to evoke the story of Ali Baba and the 40 thieves, in which the words ‘open sesame’ magically unseal a cave full of treasure, or by analogy, [a]pplicant’s goods and services").
See TMEP §1207.01(b)(vi) regarding the use of the doctrine of foreign equivalents in determining likelihood of confusion under 15 U.S.C. §1052(d), §1209.03(g) regarding the doctrine of foreign equivalents in determining questions of descriptiveness under 15 U.S.C. §1052(e)(1), and §1211.01(a)(vii) regarding the doctrine of foreign equivalents in determining whether a term is primarily merely a surname under 15 U.S.C. §1052(e)(4).
If any question arises as to the proper translation of a mark, the examining attorney may consult the Trademark Library or Translations Branch of the USPTO.
Generally, non-English wording in a mark must be translated into English and the translation (and transliteration, if applicable) must be published in the Trademark Official Gazette and included on the registration certificate. See TMEP §§809.01–809.01(a) regarding when a statement that a term has no meaning in a foreign language should be published.
Sometimes, translations that are not precise, or that give a variety of meanings, are placed in the record. While all possible translations, and discussions relative to meaning, are useful for informational purposes, not all such matter is appropriate for publishing in the Trademark Official Gazette or inclusion on the certificate of registration. Only a translation that is the clear and exact equivalent (see TMEP §809.02) should be published. This normally means only one translation, because the existence of a variety of alternative translations, or the necessity of including explanatory context, usually indicates lack of a clearly recognized equivalent meaning.
If an applicant submits a translation that is too verbose or vague to be appropriate for printing, the examining attorney must require a clear, concise translation. The transliteration of non-Latin characters, if any, must be included in the statement to be published. If necessary, the examining attorney should rewrite the statement via an examiner’s amendment and ensure that the Trademark database is updated accordingly.
Example: The translation statement contains the proper translation, but the statement is not suitable for printing because it is too wordy. If the examining attorney is only "reformatting" the applicant’s statement without changing the substance, the examining attorney should rewrite the translation statement into a simple, clear statement as to meaning, issue a "no-call" examiner’s amendment (see TMEP §707.02), and ensure that the Trademark database is updated accordingly.
Example: The translation statement is vague or is otherwise in need of clarification in order for the statement to be clear and concise. The examining attorney should contact the applicant and suggest a simple, clear statement. If the applicant agrees to amend the translation statement as suggested, the examining attorney should issue a regular examiner’s amendment, and ensure that the Trademark database is updated accordingly. If the applicant and examining attorney cannot agree on wording, the examining attorney must issue an Office action to resolve the issue.
One of the following statement formats should be used, as appropriate:
The English translation of the word "__________ " in the mark is "__________" . The English translation of the __________ word "__________" in the mark is "__________" . The English translation of "__________" is "__________" . The wording "__________" has no meaning in a foreign language. The non-Latin characters in the mark transliterate to "__________" and this means "__________" in English. The __________ characters in the mark transliterate to "__________" and this means "__________" in English. The non-Latin characters in the mark transliterate to "__________" and this has no meaning in a foreign language.
All information in the "Translation" and "Transliteration" fields in the application record will automatically be published in the Trademark Official Gazette and included on the certificate of registration. Accordingly, the examining attorney must ensure that the translation or transliteration is entered into the Trademark database. When an examining attorney determines that a translation should not be published because it is unnecessary, the examining attorney must ensure that the translation is deleted from the Trademark database, and enter a Note to the File (also referred to as a Public Note or Notation to File) in the record indicating that the translation has been deleted. The document containing the information deleted from the Trademark database will remain of record for informational purposes. See TMEP §817 regarding preparation of an application for publication or registration.