Trademark law encounters ongoing challenges when determining the registrability of terms that are generic in one language but not in another. The fundamental principle remains: a term cannot be registered as a trademark if it merely describes the goods or services it represents. For example, “apple” is considered generic for fruit, precluding a producer from claiming trademark rights for APPLE. However, the same term can acquire distinctiveness in different contexts, such as a brand name for computers.
This distinction becomes more intricate when foreign terms are involved. Courts often rely on the doctrine of foreign equivalents, which involves translating foreign words into English to assess their genericness or potential to confuse consumers. A Japanese apple producer, for instance, cannot secure a U.S. trademark for RINGO, as the term translates to “apple” and lacks distinctiveness. This principle was reinforced in Otokoyama Co. v. Wine of Japan Import, Inc., where a Japanese sake term was deemed generic under an English interpretation.
Not all courts apply this doctrine consistently. The Federal Circuit, which reviews U.S. Patent and Trademark Office decisions, has adopted a narrower interpretation. In Palm Bay Imports v. Veuve Clicquot Ponsardin, it ruled that the doctrine does not apply when U. S. consumers are unlikely to interpret the foreign term. This divergence in legal interpretation complicates efforts by foreign brand owners to obtain U.S. trademark protection.
The Supreme Court may soon address this ambiguity. In In re Vetements Grp. AG, the Federal Circuit rejected a trademark application for VETEMENTS, arguing the French term means “clothing” and is therefore generic. Vetements, the luxury fashion label, has appealed, contending that the doctrine fails to account for real-world consumer perception. A ruling in this case could redefine how foreign terms are evaluated under U.S. law.
For businesses, the implications are clear. Trademark monitoring must account for linguistic nuances and cultural context. A term that feels unique in its native language may still be generic in another, exposing brands to legal risks. As global markets expand, understanding these complexities is essential for protecting brand identity without infringing on existing rights.
The evolving landscape of trademark law highlights the need for vigilance. Whether a term is generic or distinctive often hinges on interpretation, making proactive legal strategies critical for brands operating across borders. Services like IP Defender specialize in monitoring national trademark databases for conflicts and infringements, ensuring brands stay ahead of potential issues. By tracking 50+ countries, including the EU, USA, and Australia, IP Defender helps businesses protect their intellectual property from conflicts and rogue registrations.