TMEP § 1207.01(b)(vi)
Under the doctrine of foreign equivalents, non-English wording is translated into English and then assessed for registrability, such as for descriptiveness or genericness, geographic descriptiveness and misdescriptiveness, and likelihood of confusion. See In re Vetements Grp. AG, 137 F.4th 1317, 1325 (Fed. Cir. 2025) (quoting 1 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §11:34 (5th ed. 2023 & Supp. 2025)) (applying doctrine in determining whether VETEMENTS, the French word for "clothing," was generic of clothing items and online retail stores featuring clothing); In re Spirits Int’l, N.V., 563 F.3d 1347, 1349-51 (Fed. Cir. 2009) (applying doctrine in determining whether MOSKOVSKAYA, the Russian word meaning "of or from Moscow," was primarily geographically deceptively misdescriptive of vodka not from Moscow); In re Tokutake Indus. Co., Ser. No. 79018656, 2008 TTAB LEXIS 26, at *5-6, *13-14 (2008) (holding AYUMI and its Japanese-character equivalent merely descriptive of footwear where the evidence, including applicant's own admissions, indicated that the primary English meaning of applicant's mark was "walking"); In re Thomas, Ser. No. 78334625, 2006 TTAB LEXIS 135, at *8, *10-12 (2006) (holding MARCHE NOIR for jewelry, and BLACK MARKET MINERALS for retail jewelry and mineral store services, likely to cause confusion where evidence showed MARCHE NOIR is French wording for "black market"). See TMEP §1211.01(a)(vii) for information regarding the doctrine of foreign equivalents in determining whether a term is primarily merely a surname. The doctrine is not "an absolute rule and should be viewed merely as a guideline." In re Vetements Grp. AG, 137 F.4th at 1325 (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005)).
Threshold Inquiry – Whether an Ordinary American Purchaser Would "Stop and Translate" the Non-English Wording. A threshold limitation on the application of the doctrine of foreign equivalents is whether the ordinary American purchaser would "stop and translate" non-English wording used as a mark into English. In re Vetements Grp. AG, 137 F.4th at 1326. Unless it is unlikely that the ordinary American purchaser would stop and translate the wording into its English equivalent, the doctrine of foreign equivalents applies. Id. at 1323-24. The burden is on the party opposing translation to show that it is unlikely the ordinary American purchaser would stop and translate the wording into its English equivalent. Id. at 1331. As to this inquiry, the "ordinary American purchaser" encompasses "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English." Id. at 1324 (quoting In re Spirits Int’l, N.V., 563 F.3d at 1352).
Factors to consider in determining whether the ordinary American purchaser will stop and translate non-English wording include whether:
See, e.g., In re Vetements Grp. AG, 137 F.4th at 1328-29, 1331 (finding the ordinary American purchaser would stop and translate the applied-for mark VETEMENTS because the evidence showed the direct English translation was "clothing," French was a common, modern language such that an appreciable number of Americans would be capable of translating the term, and it was unlikely the mark would be taken at face value (without translation) in the context of the goods, because the goods are clothing); In re Sadoru Grp., Ltd., Ser. No. 77941164, 2012 TTAB LEXIS 325, at *3 (2012) (finding the doctrine applicable to the applied-for mark SADORU because the evidence showed that the direct English translation was "saddle," Japanese was a common, modern language, and the context of the goods supported translation as the goods were motorcycle seats, which are a type of saddle); In re La Peregrina Ltd., Ser. No. 78676199, 2008 TTAB LEXIS 38, at *9 (2008) (finding the ordinary American purchaser would stop and translate the applied-for mark LA PEREGRINA because the evidence showed the exact English translation was "the pilgrim", Spanish was a common, modern language, and there was no compelling evidence to establish that the mark would not be translated because of marketplace circumstances or the commercial setting in which the mark is used); In re Thomas, 2006 TTAB LEXIS 135, at *9-10, *14 (finding the ordinary American purchaser would stop and translate the applied-for mark MARCHE NOIR because the evidence showed it was the exact French equivalent of "black market" and French was "a common foreign language spoken by an appreciable segment of the population", and noting in relation to the goods and services, the mark suggested contraband or illicit goods).
An examining attorney should generally apply the doctrine when the evidence shows that: (1) the relevant English translation is literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists; and (2) the non-English wording is from a common, modern language, and not from a dead or obscure language.
The examining attorney may also consider the context in which the mark is used and whether it supports translation for the purpose of applying the doctrine. However, the burden is on the applicant to show that the context in which the mark is used would cause an ordinary American purchaser to not translate the wording.
English Translations – Literal and Direct
The English translation evidence is a critical factor for the Trademark Trial and Appeal Board (Board) and the courts when determining whether to apply the doctrine. If the translation evidence shows that the English translation is unambiguously literal and direct, with no other relevant connotations or variations in meaning, this weighs in favor of the doctrine applying. See In re Aquamar, Inc., Ser. No. 85861533, 2015 TTAB LEXIS 178, at *1-2, *11-16 (2015) (holding MARAZUL for fish and seafood, and BLUE SEA for fish, likely to cause confusion, after finding the evidence established that "mar azul" is the Spanish equivalent of "blue sea"); In re Sadoru Grp., Ltd., 2012 TTAB LEXIS 325, at *3 (finding SADORU merely descriptive of motorcycle seats and pads where the relevant English translation to "saddle" was "literal and direct").
When determining the appropriate English translation of non-English wording in the mark, an examining attorney should view the translations in the context of any significant features in the mark, such as design or wording elements, the identified goods and/or services in the application, the relevant marketplace, and the specimen. See, e.g., In re Perez, Ser. No. 73777892, 1991 TTAB LEXIS 32, at *4-5 (1991) (holding EL GALLO for fresh vegetables, and ROOSTER for fresh citrus fruit, likely to cause confusion, rejecting applicant’s argument that purchasers would ascribe other meanings to "gallo," where "rooster" was the first English translation listed in a Spanish-English language dictionary entry for "gallo," where "gallo" was the only listed Spanish translation in a dictionary entry for "rooster," and where the design of a rooster on the specimen reinforced the translation of "GALLO").
Where the evidence shows that the English translation is not literal or direct, the doctrine of foreign equivalents has generally not been applied. See In re Sarkli, Ltd., 721 F.2d 353, 354-55 (Fed. Cir. 1983) (holding REPECHAGE for various skin-care products, and SECOND CHANCE for face creams and other toiletries, not likely to cause confusion, where the evidence failed to show that the terms were direct foreign equivalents); see also In re Buckner Enters., Ser. No. 73563836, 1987 TTAB LEXIS 7, at *3-4 (1987) (holding DOVE (with design) for stoves and furnaces, and PALOMA for various forms of gas heating apparatus, not likely to cause confusion, because the Spanish word "paloma" and the English word "dove" were not exact synonyms in that "paloma" could be translated to either "dove" or "pigeon").
Thus, several translation dictionaries showing variations in the English meaning constitute evidence that the foreign word or term may not have a literal and direct translation, and the doctrine should not be applied.
Common, Modern Languages
When "an appreciable number of purchasers" are likely to be aware what the non-English wording means in English, such circumstance weighs in favor of the doctrine applying. See In re Vetements Grp. AG, 137 F.4th at 1326 (citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d at 1376-77).
Evidence that the wording is from a common, modern language may demonstrate that an appreciable number of Americans are capable of translating the wording. See In re Vetements Grp. AG, 137 F.4th at 1326-1327 & n.8, 1331 (finding substantial evidence in the record demonstrating that French was the fourth most common language spoken in the United States and that it is taught in schools, such that "it is evident . . . an 'appreciable' number of Americans are capable of translating the term VETEMENTS from French into English"); In re La Peregrina Ltd., 2008 TTAB LEXIS 38, at *9 (2008) ("We presume that a word in one of the common, modern languages of the world will be spoken or understood by an appreciable number of U.S. consumers for the goods at issue.").
If an examining attorney maintains a refusal and/or requirement that applies the doctrine of foreign equivalents, then the examining attorney must ensure there is evidence of record showing the relevant foreign language is a common, modern language. Although the type of evidence will vary depending on the particular facts of each case, examining attorneys should provide evidence of the percentage or number of U.S. purchasers who speak the foreign language in question. They should also provide the percentage or number of foreign-speakers who currently speak that foreign language worldwide, if available. Census evidence identifying the number of people who speak various foreign languages in the United States can be found at https://www.census.gov/data/tables/time-series/demo/language-use/2017-2021-lang-tables.html (accessed March 9, 2026).
For certain foreign languages spoken in the United States, such as Spanish, Greek, German, Japanese, Russian, French, Chinese, and Italian, U.S. Census Bureau data or other similar evidence showing the percentage or number of U.S. consumers who speak the foreign language in question may be sufficient to show that the language is a common, modern language. See Ricardo Media Inc. v. Inventive Software, LLC, Opp. No. 91235063, 2019 TTAB LEXIS 283, at *19-20 (2019) (Census evidence showing that, after English, Spanish was the most commonly spoken language in the United States, and that over 12% of the United States population spoke Spanish, supported the Board’s decisions that routinely applied the doctrine of foreign equivalents to Spanish-language marks); In re S. Malhotra & Co. AG, Ser. No. 79194076, 2018 TTAB LEXIS 344, at *6-7 (2018) (Census evidence showing that 304,932 U.S. residents age five and over spoke Greek at home sufficient for the Board to find Greek a common, modern language that was not dead or obscure); In re Weiss Watch Co., Ser. No. 86782562, 2017 TTAB LEXIS 183, at *12 (2017) (Census evidence showing German was spoken in 1,109,216 U.S. households in 2009 sufficient for the Board to find German was a common, modern language); In re Tokutake Indus. Co., 2008 TTAB LEXIS 26, at *8-9 & n.1 (Census evidence showing Japanese was spoken by over 100 million people worldwide and by hundreds of thousands of people in the United States sufficient to find Japanese was a common, modern language); In re Joint-Stock Co. "Baik," Ser. No. 78341041, 2006 TTAB LEXIS 196, at *9, *14 (2006) (evidence from online research database and CNN website showing 706,000 Russian-speakers lived in the United States sufficient to establish that a "significant portion of consumers" would understand the English meaning of the Russian mark for Russian vodka); In re Thomas, 2006 TTAB LEXIS 135, at *8-9 (purported Census evidence showing that only 0.6% of the American population spoke French "very well" or "well" and French had the second greatest number of U.S. speakers sufficient to find French was a common, modern language); In re Oriental Daily News, Ltd., 1986 TTAB LEXIS 68, at *4-5 (1986) (applicant’s daily newspaper in the Chinese language read by a sizable number of readers in the United States familiar with both the Chinese and English languages supported application of the doctrine of foreign equivalents to a Chinese-language mark); In re Ithaca Indus., 1986 TTAB LEXIS 80, at *3, *9 (1986) (evidence showing only a small percentage of the U.S. population spoke Italian at home, and of those speakers some could not speak English to an appreciable extent, sufficient to find Italian was a common, modern language spoken by many in the United States).
For other foreign languages, where Census or similar evidence is not available or is unpersuasive, additional evidence may be needed to show that the language is a common, modern language. Such additional evidence may include showing the foreign country where the language is spoken is a prominent trading partner of the United States, the foreign language is spoken by a sizeable world population, and/or the foreign language is taught in a specified percentage of U.S. elementary and secondary schools, universities, and colleges. This evidence may be obtained from the USPTO’s Translations Branch, as well as the internet, LexisNexis®, and any other relevant electronic or print resources.
Doctrine Generally Does Not Apply to Dead or Obscure Languages. If evidence shows that the language at issue is a dead language, the doctrine will generally not be applied. In re Spirits Int’l, N.V., 563 F.3d at 1351. A dead language is "[a] language, such as Latin, that is no longer learned as a native language by a speech community." https://ahdictionary.com/word/search.html?q=dead+language (accessed March 9, 2026).
Similarly, the doctrine will generally not be applied to obscure languages. In re Spirits Int’l, N.V., 563 F.3d at 1351; see, e.g., In re Spirits of New Merced, LLC, Ser. No. 78710805, 2007 TTAB LEXIS 93, at *9-10 (2007) (in considering whether "Yosemite" was primarily geographically descriptive, the Board found no evidence that the general public would be familiar with the derivation of "Yosemite" as meaning "those who kill" or "the killers" in the Native American Miwok tribal language, or "that this meaning would be anything but obscure to them"); In re Fiore, LLC, Ser. No. 76445173, 2005 TTAB LEXIS 296, at *18 (2005) (acknowledging Old English was an obscure language); Gen. Cigar Co. v. G.D.M. Inc., 988 F. Supp. 647, 660-61 (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).
The determination of whether a language is dead or obscure is made on a case-by-case basis, based upon the meaning the word or term would have to the ordinary American purchaser. For example, Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the ordinary American purchaser (such as the term appearing in news articles), then that Latin term would not be considered dead. The same analysis is applied to words or terms from obscure languages.
See TMEP §809.01(b)(iii) for information about the exception to the translation requirement for dead or obscure languages.
Context of Specific Goods, Services, or Marketplace Circumstances
The doctrine will not be applied when the context in which the mark is used, such as the specific goods and/or services or the marketplace circumstances, makes it unlikely that the ordinary American purchaser would translate the mark and instead accept the mark at face value. See In re Vetements Grp. AG, 137 F.4th at 1328-29; In re Spirits Int’l, N.V., 563 F.3d at 1352; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d at 1377. The burden is on the applicant to show that the context in which the mark is used is such that it is unlikely that the ordinary American purchaser would translate the mark.
For example, the doctrine will not be applied where the foreign wording has developed an alternative meaning in the relevant marketplace that is different from the translated meaning in English, and the evidence shows that the alternative meaning would be understood by the ordinary American purchaser. See In re Bayou Grande Coffee Roasting Co., 160 F.4th 1370, 1376-77 (Fed. Cir. 2025) (finding that the doctrine of foreign equivalents does not apply because KAHWA has a well-established alternative English meaning); Cont’l Nut Co. v. Le Cordon Bleu S.a.r.l., 494 F.2d 1395, 1396-97 (C.C.P.A. 1974) (finding that applicant’s ownership of a prior registration for BLUE RIBBON did not preclude opposer from asserting damage resulting from applicant’s registration of the mark CORDON BLEU, (which literally translated to "blue ribbon") because CORDON BLEU would not be translated by, or have the same significance to, an American purchaser in view of the alternative English meaning as a highly skilled cook, as evidenced by American English dictionary entries); cf. In re La Peregrina Ltd., 2008 TTAB LEXIS 38, at *15 (noting that if sufficient evidence had been provided to show that the Spanish-language mark LA PEREGRINA, which translates to mean "the pilgrim," for goods including pearls and pearl jewelry, was viewed by the relevant purchasing public as the "name of a very famous and unique pearl," such would be a situation "where purchasers would not translate the name").
Additionally, the doctrine typically will not be applied to personal names that would be recognizable as first names to ordinary American purchasers. Ricardo Media Inc. v. Inventive Software, LLC, 2019 TTAB LEXIS 283, at *23 (record did not support a finding that "consumers would be likely to translate RICARDO to RICHARD, or RICHARD to RICARDO, but would instead take each name as it is, in its own language, as identifying the person named, whether real or fictional, known or anonymous."); In re Tia Maria, Inc., 1975 TTAB LEXIS 130, at *3-5.
The doctrine also typically will not be applied where the record indicates it is unlikely purchasers would translate the mark because of marketplace circumstances or the commercial setting in which the mark is used. See, e.g., In re Tia Maria, Inc., 1975 TTAB LEXIS 130, at *3-4 (1975) (holding TIA MARIA (which translates to "Aunt Mary") for restaurant services, and AUNT MARY’S for canned fruits and vegetables, not likely to cause confusion, because a person dining at the TIA MARIA restaurant surrounded by its Mexican décor and Mexican food, would be likely to accept the Spanish-language mark "TIA MARIA" as it was and not translate it into "AUNT MARY").
On the other hand, where goods or services bearing the non-English language mark are targeted to consumers who speak that language, this weighs in favor of applying the doctrine, as those consumers will be more likely to translate such wording. In re Spirits Int'l, N.V., 563 F.3d at 1356; In re Aquamar, Inc., 2015 TTAB LEXIS 178, at *13 (finding that ordinary purchasers would stop and translate the mark into English and noting "that it is essentially [applicant's] stated intention [to have consumers translate], as MARAZUL-branded fish is 'designed to truly target the US Hispanic market with authentic bilingual packaging.'"); In re Am. Safety Razor Co., Ser. No. 73525932, 1987 TTAB LEXIS 95, at *4-6 (1987) (finding that "bilingual purchasers familiar with registrant's 'GOOD MORNING' and design shaving cream would, upon encountering applicant's 'BUENOS DIAS' soap sold with Spanish-language phrases appearing on the container and with the name of the goods appearing in Spanish, be likely to translate 'BUENOS DIAS' into its 'GOOD MORNING' English equivalent and mistakenly believe that the 'BUENOS DIAS' product was a product emanating from registrant and marketed to the Spanish-speaking public").
Similarly, the doctrine may apply when foreign wording appears next to its English language equivalent, as an ordinary purchaser will recognize the terms as equivalents because of the provided translation. See In re Aquamar, Inc., 2015 TTAB LEXIS 178, at *14 ("When consumers view [applicant's] MARAZUL packaging they will see several Spanish words displayed next to their English equivalents, increasing the likelihood that they will translate MARAZUL."); In re Highlights for Children, Inc., Ser. No. 85838981, 2016 TTAB LEXIS 104, at *10-11 (2016) (noting that the doctrine of foreign equivalents applies even when the foreign wording in the mark will appear with its English equivalent, because ordinary purchasers will still recognize the terms as equivalents due to the provided translation).
For information regarding the doctrine of foreign equivalents in specific contexts, see TMEP §1207.01(b)(vi)(A)-(b)(vi)(B) for likelihood of confusion, §1209.03(g) for descriptiveness or genericness, §1210.05(b) for geographical deceptiveness, §1210.10 for geographic significance, and §1211.01(a)(vii) for surnames.
With respect to likelihood of confusion, "[i]t is well established that foreign words or terms are not entitled to be registered if the English language equivalent has been previously used on or registered for products which might reasonably be assumed to come from the same source." Mary Kay Cosms., Inc. v. Dorian Fragrances, Ltd., 1973 TTAB LEXIS 228, at *5 (1973).
The U.S. Court of Appeals for the Federal Circuit has stated that "[t]he test to be applied to a foreign word vis-a-vis an English word with respect to equivalency is not less stringent than that applicable to two English words." In re Sarkli, Ltd., 721 F.2d 353, 354 (Fed. Cir. 1983).
Under the doctrine of foreign equivalents, non-English wording used as a mark is translated into English and then assessed to determine registrability, including for likelihood of confusion. See In re Vetements Grp. AG, 137 F.4th 1317, 1325 (Fed. Cir. 2025) (quoting 1 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §11:34 (5th ed. 2023 & Supp. 2025)). Issues regarding the doctrine of foreign equivalents arise early in examination, that is, at the time of conducting a search for confusingly similar marks. The search of non-English wording in an applied-for mark must include a search of its English translation to ensure that all possible conflicting registrations and prior-filed applications have been identified in the event that the doctrine applies. See TMEP §§809.01-809.03 for information regarding how to ascertain the meaning of non-English wording in a mark and when the translation requirement applies.
After conducting a complete search, an examining attorney must then assess whether a refusal under Trademark Act §2(d) may be warranted. If so, the examining attorney should research the English translation of the non-English wording further using available resources, such as dictionaries, the Internet, and LexisNexis®, to ascertain whether there is sufficient evidence to support applying the doctrine. The doctrine of foreign equivalents is a guideline, not an absolute rule. In re Vetements Grp. AG, 137 F.4th at 1325 (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377 (Fed. Cir. 2005)). The doctrine should be applied unless it is unlikely that the ordinary American purchaser would stop and translate the wording into its English equivalent. Id. at 1323-24; see, e.g., Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d at 1377 (reversing holding of likelihood of confusion where the marks were VEUVE ROYALE, the French equivalent of "Royal Widow," and THE WIDOW, finding it improbable that American purchasers would stop and translate "VEUVE" into "widow"); In re Aquamar, Inc., Ser. No. 85861533, 2015 TTAB LEXIS 178, at *11-16 (2015) (holding MARAZUL for fish and seafood, and BLUE SEA for fish, likely to cause confusion, after finding that the ordinary American purchaser would stop and translate the applied-for Spanish-language mark MARAZUL because the evidence showed it was the equivalent of "blue sea," Spanish was a common, modern language in the United States, and no different nuances or meanings were provided). See TMEP §1207.01(b)(vi) generally for the doctrine of foreign equivalents and the factors for determining whether an ordinary American purchaser will stop and translate non-Engilsh wording.
With respect to the likelihood of confusion determination, the doctrine has been applied generally in the situation where the wording in one mark is entirely in English and the wording in the other mark or marks is entirely in a foreign language. See, e.g. In re Perez, Ser. No. 73777892, 1991 TTAB LEXIS 32, at *4-5 (1991); In re Am. Safety Razor Co., Ser. No. 73525932, 1987 TTAB LEXIS 95, at *4-6 (1987); In re Hub Distrib., Inc., Ser. No. 73261747, 1983 TTAB LEXIS 129 (1983). This is the most common scenario in the case law.
The Board, however, has applied the doctrine where the wording in both marks being compared is in the same foreign language. See In re Lar Mor Int’l, Inc., Ser. No. 73256334, 1983 TTAB LEXIS 1, at *4-5 (1983) (noting "[i]t seems to us that the fact that both marks may be comprised of foreign words should not mean that we can disregard their meanings" and translating the marks BIEN JOLIE and TRES JOLIE to compare their meanings, but concluding that confusion was not likely, despite their substantially similar meanings, because of, in part, the highly laudatory nature of the registered mark, BIEN JOLIE). In the Lar Mor International, Inc., the marks in question consisted of common French terms and, thus, it was perhaps more likely that the ordinary American purchaser would stop and translate such terms. Cf. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d at 1377 (noting the doctrine of foreign equivalents will not be applied when it is unlikely that an American buyer will translate a foreign mark and agreeing with the Board’s determination that purchasers were unlikely to translate applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, but concluding that confusion was likely because, in part, the presence of the arbitrary term "VEUVE" as the first word in both parties’ marks rendered the marks similar); Brown Shoe Co. v. Robbins, Opp. No. 91176273, 2009 TTAB LEXIS 364, at *8-12 (2009) (determining the relevant circumstances of the case did not warrant application of the doctrine where the parties’ respective marks were the Spanish terms PALOMITA and PALOMA, but concluding that confusion was likely because, in part, the marks were substantially similar in appearance, pronunciation, meaning, and commercial impression).
In certain circumstances, the Board has also applied the doctrine in inter partes cases where the wording in one of the marks was in a foreign language and the wording in the other mark or marks was in a different foreign language. See August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, Opp. No. 91277224, 2025 TTAB LEXIS 462, at *17-23 (2025) (applying the doctrine to applicant’s German mark DANKE and opposer’s French marks featuring MERCI, which terms both meant "thank you;" were everyday, commonplace expressions; and appeared in English dictionaries as foreign interjections with the same English meaning); Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., Opp. No. 91099024, 1998 TTAB LEXIS 502, at *6-8 (1998) (applying the doctrine to applicant's Italian mark featuring DUE TORRI, meaning "two towers," and opposer’s Spanish marks featuring TORRES and TRES TORRES, meaning "towers" and "three towers" respectively because purchasers did not need to be fluent in both languages to readily understand the connotation of the marks), vacated and remanded on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (unpublished table decision). In other circumstances, the Board has also stated that, in general, it does not apply the doctrine where both marks are non-English words from two different foreign languages. Brown Shoe Co. v. Robbins, 2009 TTAB LEXIS 364, at *9-10; see also Safeway Stores, Inc. v. Bel Canto Fancy Foods, Ltd., 1987 TTAB LEXIS 10, at *5-7 (1987) ("[T]his Board does not think it proper to take the French expression ‘bel air’ and the Italian expression ‘bel aria’ and then convert both into English and compare the English translations to determine whether there is similarity as to connotation . . . ."). A reason for not applying the doctrine where the marks are in different foreign languages is that it is less likely that the ordinary American purchaser would be sufficiently familiar with two or more foreign languages such that they would be likely to translate the wording into English. In Miguel Torres S.A. v. Casa Vinicola Gerardo Cesari S.R.L., the Board noted that the relevant marks were of such a nature that it was unnecessary for those encountering the relevant marks to be fluent in both languages, Spanish and Italian, to understand the connotations of the marks, because a purchaser who is fluent in Spanish and familiar with the meaning of the mark TORRES may be able to discern the meaning of a mark containing the Italian wording DUE TORRI and a design of two towers. 1998 TTAB LEXIS 502, at *7-8. In August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, the Board noted that many members of the U.S. public even with only a rudimentary acquaintance with both languages, French and German, would likely be able to understand the same everyday, commonplace expression of "thank you" in the context of the marks’ use with chocolate. 2025 TTAB LEXIS 462, at *18-19, *22. In any case, the application of the doctrine of foreign equivalents is a threshold analysis performed before the separate likelihood of confusion analysis. See In re Vetements Grp, 137 F.4th at 1325.
The Board has yet to apply the doctrine in a precedential decision where the wording in one or more of the marks being compared consists of a combination of English and foreign-language words or terms. In such a case, the issue would likely remain whether the ordinary American purchaser would stop and translate these combined-language marks. The sufficiency of the translation evidence, the nature of the combined foreign and English wording (i.e., whether the wording is arbitrary, suggestive, generic, etc.), and any other relevant facts and evidence should be considered in these cases.
For information regarding the doctrine of foreign equivalents in other contexts, see TMEP §1209.03(g) for descriptiveness or genericness, §1210.05(b) for geographical deceptiveness, §1210.10 for geographic significance, and §1211.01(a)(vii) for surnames.
The doctrine of foreign equivalents is only part of the process of determining whether the marks being compared are confusingly similar. Even if the examining attorney determines that the doctrine is applicable, appearance, sound, meaning, and overall commercial impression are also factors to be considered when comparing marks. See Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005) (citing In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973)); In re Ness & Co., Ser. No. 73778313, 1991 TTAB LEXIS 6, at *2 (1991) ("[S]uch similarity as there is in connotation [between the foreign word mark and the English word mark] must be weighed against the dissimilarity in appearance, sound, and all other factors, before reaching a conclusion on likelihood of confusion as to source." (quoting In re Sarkli, Ltd., 721 F.2d 353, 354 (Fed. Cir. 1983))).
Similarity of the marks in one respect – sight, sound, or meaning – does not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related; rather, the rule is that, taking into account all the relevant facts of a particular case, similarity as to one factor alone may be sufficient to support a holding that the marks are confusingly similar. See In re Thor Tech, Inc., Ser. No. 78634024, 2009 TTAB LEXIS 253 (2009); In re White Swan Ltd., Ser. No. 73617169, 1988 TTAB LEXIS 37 (1988); TMEP §1207.01(b)(i).
For example, if the English and foreign marks being compared are weak or highly suggestive, or have additional wording or matter that serves to distinguish them, then regardless of application of the doctrine and similarity in meaning, the marks may not be considered confusingly similar. See August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, Opp. No. 91277224, 2025 TTAB LEXIS 462, at *23-25, *47-48 (2025) (concluding that DANKE and MERCI (which translate to "thank you") for chocolate are not likely to cause confusion based on findings that, even though the marks had the same meaning, their appearance and sound were quite different, creating a somewhat distinct overall commercial impression, and the meaning of the marks conceptually weak in connection with chocolate, which is often used as a thank-you gift); In re Ness & Co., 1991 TTAB LEXIS 6, at *2-4 (holding GOOD-NESS for cheese and meats, and LABONTE (which translates to "the goodness") for cheese, not likely to cause confusion, because of the laudatory nature of the term "goodness," the dissimilarity of the marks in appearance and sound, the slight differences in meaning of the marks, and the connotation of the mark GOOD-NESS in relation to applicant’s company name "Ness & Co."); In re L’Oreal S.A., Ser. No. 73325932, 1984 TTAB LEXIS 125, at *3-5 (1984) (considering the English translation of the French mark HAUTE MODE (meaning "high fashion" in English), but concluding that contemporaneous use with HI-FASHION SAMPLER was not likely to cause confusion, because of the "less than wholly arbitrary nature of the marks" and the differences in the marks, including the addition of the term SAMPLER in the English-language mark).
If both marks being compared are in a foreign language and have the same or a very similar meaning when translated, the following factors should also be assessed: (1) whether the English meaning of the marks is weak or highly suggestive with respect to the goods and/or services; and (2) whether the marks being compared are similar in sound and/or appearance in addition to having the same or similar meaning. See August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, 2025 TTAB LEXIS 462, at *23-25, *47-48. If the marks are not weak or highly suggestive and are similar in meaning and sound, they may be found to be confusingly similar. Compare Miguel Torres S.A v. Casa Vinicola Gerardo Cesari S.R.L., Opp. No. 91099024, 1998 TTAB LEXIS 502, at *6-8 (1998) (applying the doctrine and concluding that confusion was likely where applicant’s Italian mark featuring DUE TORRI, meaning "two towers," and opposer's Spanish marks featuring TORRES and TRES TORRES, meaning "towers" and "three towers" respectively, because the marks were similar not only in connotation but also in sound), vacated and remanded on other grounds, 230 F.3d 1372 (Fed. Cir. 1999) (unpublished table decision), with In re Lar Mor Int'l, Inc., Ser. No. 73256334, 1983 TTAB LEXIS 1, at *2-5, *12 (1983) (translating the marks BIEN JOLIE and TRES JOLIE to compare their meanings, but concluding that confusion was not likely, despite the marks’ substantially similar meanings, because of the highly laudatory nature of the wording "JOLIE," and the "obvious visual and phonetic differences" between the marks).
In addition, when comparing only foreign language marks, even if it is determined that the marks are not likely to be translated by purchasers, the marks may still be found confusingly similar for other reasons, such as similarity in sound and/or appearance. See Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d at 1372-73, 1377 (agreeing with Board’s finding that purchasers would not translate into English applicant’s French mark VEUVE ROYALE and opposer’s French marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT, and upholding the Board’s determination that confusion was nonetheless likely as to these marks, because "the presence of [the] strong distinctive term [VEUVE] as the first word in both parties’ marks renders the marks similar, especially in light of the largely laudatory . . . significance of the word ROYALE").
The examining attorney must additionally consider all other relevant DuPont factors in assessing whether there is a likelihood of confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361; In re L’Oreal S.A., 1984 TTAB LEXIS 125, at *3 (noting that the "similarity [of the marks] in connotation must be viewed as but a single factor in the overall evaluation of likelihood of confusion").
See TMEP §1207.01(b)(vi) for general information about the doctrine of foreign equivalents and the factors for determining whether ordinary American purchasers would stop and translate. For information regarding the doctrine of foreign equivalents in other contexts, see TMEP §1209.03(g) for descriptiveness or genericness, §1210.05(b) for geographical deceptiveness, §1210.10 for geographic significance, and §1211.01(a)(vii) for surnames.