Thanks to The TTABlog’s latest blog post, I recently learned of the Trademark Trial and Appeal Board’s (TTAB’s) decision to uphold the United States Patent and Trademark Office’s (USPTO’s) refusal to register VETEMENTS as a trademark for various clothing items, including shirts, skirts, and sweaters, and for related retail store services. You’ve probaly heard of this major French fashion brand before!

In re Vetements Group AG, the TTAB upheld that Vetement’s mark(s) were “generic” and “merely descriptive” of their goods and services, and lacking in the “acquired distinctiveness” that would be needed to overcome these issues. We previously defined these terms for you. For the sake of time, you can check out our Glossary and/or read the following posts for more explanation on what they mean.

But for today’s blog post, I thought it would be a good idea to go over the main reason why VETEMENTS was denied registration and what you should take away from this case if you have developed a foreign language trademark. In this blog post, we’ll explain the “doctrine of foreign equivalents” and what it means for your brand.

What Is the Doctrine of Foreign Equivalents?

If you are a visual learner, you may enjoy watching the following video. It covers some of the main points that we’ll be discussed in this post.

The doctrine of foreign equivalents is a legal principle applied in U.S. trademark law that requires courts, the USPTO, and the TTAB to translate foreign words into English to determine whether they are registrable as trademarks, or confusingly similar to existing trademarks.

This doctrine is intended to protect consumers within the United States from confusion or deception caused by the use of same term in different languages. As a general principle, the doctrine is applied in situations in which an American consumer is likely to “stop and translate” foreign words into their English equivalent. And in fact, most modern-day languages are subject to the doctrine of foreign equivalents.

So, (1) if your business name when translated to English is still “generic” or is “merely descriptive” of the goods or services being offered, OR (2) if your name shares the same meaning as an already existing trademark in ANY language, then your mark will very likely NOT eligible for trademark registration.

In the latter scenario, the two marks would be considered too similar to coexist in the marketplace.

And today’s post discusses an example of the former. “Vetements” is a French language term that translates into English as “clothing”, making the mark generic, i.e. descriptive of the product itself. This is a big problem under trademark law.

Why Is the Doctrine of Foreign Equivalents Important?

The doctrine of foreign equivalents is important because it helps to prevent confusion in the marketplace and ensures that each business is given fair opportunity to promote their business.

The doctrine recognizes that consumers may be familiar with foreign languages and as such, may associate foreign terms with their English equivalents. By treating foreign terms as equivalent to their English counterparts, trademark law aims to protect consumers from confusion or deception.

Furthermore, the doctrine of equivalents ensures that unfair competition isn’t being created. As you can imagine, other businesses within the clothing and retail industry need to be able to use the word “clothing” when describing their own products. It would be unfair to allow one company to have a monolopy of a word that everyone would need to reasonably use in their business’ operations and marketing, regardless of it being stated in a different language. 

This means that in practice, when assessing the availability of a trademark, it is important to consider not only the exact words used, but also any foreign equivalents that may be considered too similar. For companies that operate globally or that have multilingual branding strategies, this can be a crucial factor to consider when developing and protecting trademarks.

Technically ALL trademark applications undergo an examination for foreign language equivalents. Even if the submitted brand name is in English, the USPTO will still check that the trademark doesn’t already exist in Spanish. However, when the submitted brand name is in a foreign language, this doctrine is particularly relevant because an applicant MUST translate their foreign language business name into English for USPTO records and to aid the USPTO Examining Attorney in applying this doctrine.

Vetements failed to consider trademark rules when creating their brand name and now they’ve run into this problem of genericness/descriptiveness. As long as they continue to use VETEMENTS, they will very likely continue to run into this issue globally.

In the United States, proving “acquired distinctiveness” can help a brand like Vetements overcome trademark refusal. However, this is no easy feat, even for a company with what I imagine is unlimited resources. Vetements Group AG failed to provide sufficient evidence to show that their brand name had gained enough fame and popularity to the American purchaser that the VETEMENTS mark is recognized as a source identifier and not a generic translation for “clothing”.

It wasn’t enough that less than 1% of the American population speaks French. 1% is still approximately 1.3 million speakers in the United States. And French is the “fifth most commonly spoken non-english language” in the U.S. These stats were significant in the TTAB’s eyes.

Vetements provided no survey evidence, as is common in these cases, to indicate that the public recognizes Vetements as a brand/source identifier.

Their evidence of recognition from fashion magazines was not convincing.

And Vetements also failed to show any evidence of their advertising expenditures, another common piece of evidence found in cases like these.

So overall, there are other forms of evidence that Vetements Group AG can provide to appeal this decision, however, their legal team would have much less work if they had picked a name that satisfies that trademark law.

This very likely explains why Vetements Group AG went through the effort to apply for trademark registration for mark VTMNTS, a new name without the vowels. And thankfully, this plan has paid off as this new mark makes their brand name more visually and commercially distinctive, and has already secured various trademark certificates.

How Does the Doctrine of Foreign Equivalents Impact Trademark Strategy?

The doctrine of foreign equivalents has a number of implications for trademark strategy. One of the most important is that it underscores the importance of conducting thorough trademark searches that take into account foreign equivalents. This means not only searching for exact matches to your proposed trademark, but also searching for foreign translations and transliterations that could be too similar.

Attorneys have access to powerful algorithms that allow us to locate trademark conflicts like this. With the help of these algorithms, our team is able to look for conflicting marks or businesses with phonetic variations, separation of words, translations, plurals, reversed words, misspellings, synonyms, and a lot more across the U.S. Federal trademark registrations, state trademark registrations, business entity formations, domain name registrations, web results, social media, and more.

Moreover, as alluded to previously, another implication of the doctrine of foreign equivalents is that it may be more difficult to obtain trademark protection for marks that are similar in meaning to existing marks, even if they are in a different language. The assumption is that consumers familiar with both languages will be confused if both brands were to co-exist.

Conclusion

To wrap things up, the doctrine of foreign equivalents is an important principle in trademark law and understanding this doctrine is critical to developing a comprehensive trademark strategy. 

It is important that you are aware of the implications of this doctrine for your trademark strategy and that you work with an experienced trademark attorney who can help you navigate the complexities of trademark law.

If you have not yet consulted with a trademark attorney regarding your foreign language trademark or any trademark for that matter, you may be missing out on vital analytics and opening yourself up to potential legal challenges, like consumer confusion and litigation.

Need Help?

If you’ve created a generic foreign trademark or your trademark already exists in another language for the exact or similar products and/or services, you may want to pick up our eBook, 10 Mistakes to Avoid for a Smart & Successful Brand Name.

In this eBook, one of the topics we cover is foreign language trademarks, including the exception to the rule, further explanation of the legal implications, as well as, how you should manually conduct a proper search for other potential brand name conflicts. Take advantage of our 50% off limited time offer!

Otherwise, it may be time for a rebrand.

We know that this news is often difficult to hear, but you’re definitely in for a harder road ahead if you continue down this path. You’ll waste more time and money, fighting for a mark that might not truly be worth it. Rebranding, though sometimes costly, will save you in the long run and help you secure the legacy you truly intended.

And if you need help selecting an entirely new business name, we have a service that can help! Check out our Brand Name Consultation, a 60 Minute Legal-Marketing hybrid session designed to create a name that is not only trademarkable, but also marketable within 1 hour. It’s our 1 Hour Trademark.

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One of the first things you learn while studying Trademark Law is that “there’s no such thing as trademark rights in a word”.

So when the public at large becomes upset that a celebrity, public figure, or person is trying to trademark a word, like Kim Kardashian’s “Kimono” or Michael B. Jordan’s “J’ouvert”, they mistakenly believe that Kim and Michael are trying to own a word outright! That no other company or person will be able to use those words whatsoever, whether in ordinary conversation…or in business! And though there is some truth to that last point — business owners and businesses who own a trademark ARE afforded some special rights — this sentiment is still WHOLLY inaccurate!

The rights granted through trademark registration are not as broad as people may think!

Now, if we briefly set aside the cultural significance and appropriation issue behind these two marks – and don’t worry! I’ll get back to it 👀 – both scenarios highlight something pretty important! Most people are completely uninformed about (1) what a trademark is, and (2) how trademarks REALLY work.

So it’s time we cleared up that confusion and talk about how trademarks REALLY work in our society!

HOW TRADEMARKS REALLY WORK

TRADEMARK = WORD/PHRASE/LOGO/MARK + GOODS/SERVICES

And because a trademark is dependent on your good/services, that’s why companies like Dove soap and Dove chocolate can both exist despite being owned by two separate companies! And other companies too, like:

• • Delta Airlines vs Delta Faucets
  • Domino Sugar vs Domino’s Pizza
  • Canon EOS (Canon cameras’ operating system) vs eos Lip Balm,
  • MAC Cosmetics vs and Apple’s Mac Computers
  • Morningstar (investment research company) vs Morningstar Farms (vegetarian food company)

Under Trademark Law, two brands can co-exist with the same name as long as the two brands do not create customer confusion. And whether there’s consumer confusion is dependent on multiple factors, but some factors that we do consider are:

(1) whether products/services are in different industries;

eg. Dove soap = skincare vs. Dove chocolate = food

(2) whether the products/services share similarities, including purpose and price point; and

eg. Mac Computers = $1000+ technology vs. MAC Cosmetics = $20-$80 make-up

(3) whether there are similarities in marketing and target consumers

eg. Hungry consumers don’t confuse a bar of soap for a bar of chocolate. Similarly, consumers shopping for electronics aren’t confusing a make-up palette for a laptop.

For one company to have a total monopoly of a word would mean that they have products and services that fit every industry in America! It’s impossible. No one company is a one size fits all, does all. Even billion dollar corporations with extensive trademark portfolios operate only in a few industries at a time.

Kim K. and Michael B. Jordan’s Trademark Applications

Michael’s trademark application was in its final stages and approved by the USPTO before the public caught wind of the application and expressed their disapproval.

snippet from Michael B. Jordan’s J’ouvert Trademark Application

J’ouvert Registration Certificate for audio & video recordings, digital media, and downloadable music that’s been registered since 2014.

DESCRIPTIVE BUSINESS NAMES

& FOREIGN LANGUAGE BUSINESS NAMES

As a side note: I do believe that Kim would have faced an uphill battle attempting to trademark “Kimono” because her name when translated to English describes exactly what she provides – “clothing”. Typically, when your business name describes the product/service you’re offering, the USPTO will ignore, “disclaim”, that portion of your name and look to the other parts of your business name to see if it’s distinct enough for trademark registration. To avoid further confusion/getting off-topic, we’ll just say that descriptive business names, even those of a foreign language, are NEVER good business names.

If your business name describes your product/services OR if your business name is a foreign language, you should take our quiz: Is Your Brand Name Trademark Ready? You’ll get more information on the legal implications behind your business name.

So…What We Can Learn from Kim K. and Michael B. Jordan’s Controversies

Again, the public misunderstands what it means to really trademark a word. It doesn’t provide as broad of ownership rights as they think! It only protects the word under the goods/services listed on the trademark application. So Kim K. and Michael B. Jordan’s actions aren’t AS extreme as the public believes it to be.

HOWEVER…

Should some words, though trademarkable, be off-limits anyway? Absolutely!

Just because you CAN successfully trademark a word doesn’t mean you should. And Kim K. and Michael B. Jordan both learned this lesson the hard way when the public boycotted their brands.

My personal opinion? J’ouvert is so intricately tied to the roots and culture of West Indians and Caribbean people. J’ouvert is a part of our carnival experience – a celebration typically held the night before the daytime carnival.

And then add the fact that so much of our music makes reference to drinking rum! Rum HAS to be the number 1 drink of choice in West Indian & Caribbean culture.

So for one company to monopolize on that significance is just culturally insensitive!

Growing up, my mom would joke every Crop Over (Barbados’ carnival season) that my favorite songs were always the ones about rum. And she’s right!

As a child, I would daydream about my adult self at J’ouvert and at Kadooment (Barbados’ daytime carnival) in a costume, drinking rum, and having the time of my life. We all live that experience! We all share some version of that dream! Hence the outrage!

The public has made an example of Kim Kardashian and Michael B. Jordan, but by no means, will they be the last people or company to make this mistake.

When you’re influenced by a culture, you need to fully consult with the people of that culture.

And it honestly might not be enough to just have someone of the culture on your team, like Michael B. Jordan’s supposed situation.

You may want to ask people outside of the work bubble and business-fantasy that you’re building! You need someone objective and neutral. It’s important! Fail to do so, and you’ll likely waste all the money you’ve invested into your brand – packaging, inventory, domains, promotional items, etc. – and find yourself facing an expensive rebrand.

If you need help rebranding, JNJ Legal offers an amazing Brand Name Consultation to help entrepreneurs name their brand, course, event, etc. in 1 hour! Review our Brand Name Consultation for more information, reviews, FAQs, and more.