Foreign Language Trademarks and Non-English Trademark Applications

Trademark registration applications for non-English words present special challenges.  Trademark examination at the USPTO normally considers whether there are similar marks already registered that would prevent the applied-for mark from being registered.  Typically, the USPTO considers the look, sound, and meaning, along with other factors, of a mark and the class of goods and services with which it is used when deciding if it is similar to another mark.

When the applied-for mark is in a foreign language, the application must include a translation or a trans-literation of the mark so that the meaning can be ascertained and compared with other marks.  If the foreign mark is written with letters from the Latin or Roman alphabet, as a German, French, or Spanish word might, then a translation should be provided.  If the foreign mark is composed non-Latin-based letters, such as Cyrillic, Chinese, or Korean, a transliteration and a translation should be provided.  In some cases, of course, no translation will exist, especially if the foreign word is made up or a collection of random characters.

If the USPTO receives an application for a non-English or non-Latin-based trademark without a translation or transliteration, it will require that a statement be submitted translating the mark.

Recall that the distinctiveness of a trademark is described on a spectrum ranging from generic to fanciful.  Marks that are fanciful possess the required distinctiveness to be granted registration, assuming they meet other statutory guidelines and do not conflict with other marks.  Marks that are generic can never become trademarks.  Marks that are descriptive – slightly more distinct than generic – generally can’t be registered either, because they don’t serve to distinguish one product from another (because they simply describe the product, right?).  However, descriptive marks can be registered on the Supplemental Register, and can be registered on the Principal Register if they acquire secondary meaning.  Secondary meaning is gained when the public comes to recognize the mark as signifying the company behind the product or service – the mark takes on the proper source-indicating function that a trademark must have.

Some may think that they can get around this secondary meaning requirement by taking an descriptive trademark and translating it into another language, assuming that the use of non-English characters or a non-English translation makes the mark more distinctive.  However, the USPTO requires a transliteration or translation for this very reason – to prevent such a run-around.  By requiring the translation, the USPTO can compare the English-meaning or English-sounding version of the foreign-language mark with other marks registered at the USPTO, and can reject or allow the mark on that basis.

Some foreign language marks do not require a translation.  Marks which include foreign words that are also common or defined in English need not be translated (think “siesta” or “taco”).  Foreign language articles that prepend English words also need not be translated (“le pool” or “la restaurant,” for instance).  Lastly, marks that incorporate dead languages generally do not need to be translated, because the dead meanings are not ones with which the public would associate the mark.

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