The U.S. Supreme Court’s recent acceptance of a petition from Vetements Group AG has sparked renewed discussion about the doctrine of foreign equivalents in trademark law. This doctrine, which assesses whether a non-English word can be registered as a trademark, depends on whether consumers are likely to interpret the term as its English equivalent. The case revolves around whether the French word Vetements - meaning “clothing” - is generic, descriptive, or eligible for trademark protection.
The Doctrine of Foreign Equivalents and Consumer Perception
The Trademark Manual of Examining Procedure (TMEP) states that foreign words with direct English translations may be rejected if they are merely descriptive or generic. For instance, a mark like VEUVE ROYAL (French for “Royal Widow”) was denied registration because U.S. consumers are unlikely to translate it, despite its origin in a common language. The critical factor is whether the average American consumer would “stop and translate” the term.
However, the doctrine is not absolute. Courts have ruled that terms from languages like Spanish, French, or Russian may qualify, but only if they meet specific criteria. The Booking.com decision (2020) underscored that trademark law must consider how consumers perceive a mark, not just its linguistic origin. This principle became central to Vetements’ argument.
The Vetements Case: A Clash of Legal Interpretations
Vetements filed two trademark applications for the word mark Vetements and its stylized version, covering clothing and retail services. The U.S. Patent and Trademark Office (USPTO) rejected the marks, asserting they were generic for “clothing.” Vetements contended that the term, while literally translating to “clothing,” was not descriptive in the fashion industry and had gained recognition through media and brand identity.
The Trademark Trial and Appeal Board (TTAB) upheld the rejection, arguing that the term’s generic nature outweighed its brand recognition. Vetements appealed to the Federal Circuit, which affirmed the TT, stating that the focus should be on whether consumers associate the term with the generic category. The case now reaches the Supreme Court, where the legal interpretation of the doctrine will be tested.
Divergent Approaches Across Circuits
Courts have interpreted the doctrine of foreign equivalents differently, creating uncertainty for businesses. The Fourth Circuit, for example, applied a consumer perception test, ruling that the Italian term UNO (meaning “one”) was not descriptive for a pizza restaurant. In contrast, the Second Circuit has taken a more rigid approach, prioritizing the term’s meaning in its country of origin over consumer behavior.
The Fifth Circuit similarly emphasized automatic translation for assessing descriptiveness, finding the Spanish term CHUPA (meaning “to suck”) generic for lollipops. Meanwhile, the TTAB has acknowledged that some consumers may be fluent in the relevant language, leading to conflicting outcomes in similar cases.
Implications for Trademark Strategy
The outcome of the Vetements case could reshape how businesses approach trademark applications involving non-English terms. Companies must now navigate a patchwork of interpretations, balancing linguistic nuance with consumer perception. For instance, a term from a common language like French may still be deemed generic if it lacks distinctiveness in the marketplace.
Trademark monitoring and strategic registration are critical. Brands should evaluate whether their marks are likely to be perceived as generic, descriptive, or distinctive. Legal clarity on the doctrine’s application will help businesses avoid costly rejections and ensure their trademarks are protected.
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