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.

Conducted via video call, we guide entrepreneurs through the “legal science” of trademark law, introduce strategies that stimulate creative expression, and create a name that NOT ONLY avoids the most common trademark pitfalls, BUT ALSO captivates the attention of your target consumer! We can help you cut down on the brain fog and time that it takes to brainstorm with our proven methodology. Visit this page for more.

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