The legal landscape of trademark registration in the United States is undergoing scrutiny as Vetements Group AG (“Vetements”) petitions the Supreme Court to review a Federal Circuit decision involving the mark "VETEMENTS." This case highlights the complexities of applying the doctrine of foreign equivalents and its implications for businesses seeking to protect their trademarks.
A Case of Global Trademark Challenges
Vetements, a Swiss luxury brand known for reimagining expensive clothing items, has faced an uphill battle in securing federal trademark registration for its name. In June 2020, Vetements filed two trademark applications for "VETEMENTS" to be used on clothing and online retail services. The United States Patent and Trademark Office ("USPTO") initially rejected the application under the doctrine of foreign equivalents. This principle holds that if a mark corresponds directly to an English word through translation from another language, it is considered generic and thus unprotectable.
A Clash of Legal Interpretations
The USPTO's rejection was based on the reasoning that "VETEMENTS," being a French word that translates directly to "clothing" in English, fails to meet the distinctiveness required for trademark protection. Vetements appealed this decision to the Trademark Trial and Appeal Board ("TTAB"), which concurred with the USPTO's ruling. The TTAB concluded that the mark was generic and descriptive under the doctrine of foreign equivalents, and Vetements also failed to demonstrate acquired distinctiveness.
Federal Circuit Affirms TTAB Decision
In May 2023, the Federal Circuit affirmed the TTAB's decision, emphasizing the importance of considering consumer perceptions when applying the doctrine of foreign equivalents. The court acknowledged that a significant number of American consumers speak French and are likely to translate the mark into English, thereby diminishing its distinctiveness.
Vetements Seeks Supreme Court Intervention
Vetements has since petitioned the Supreme Court for certiorari, arguing that the Federal Circuit misapplied the doctrine established in cases like Estate of Unverricht v. Hertz. The brand asserts that prior Supreme Court precedent protects foreign words based on consumers' perceptions rather than direct translations. Vetements argues that this approach aligns with the Fourth Circuit's methodology, which considers how a consumer would interpret the mark, while the Second and Fifth Circuits employ a stricter direct-translation test.
Implications for Trademark Law
The outcome of this case could significantly influence trademark registration processes for foreign words. If the Supreme Court reverses the Federal Circuit decision, it may broaden trademark protections by introducing a more subjective consumer-perception-based test. Conversely, an affirmation would solidify the direct-translation rule, making it harder for marks with translatable foreign origins to secure registration.
A Call for Clarification and Consistency
Vetements also highlights the lack of clarity in exceptions to the doctrine of foreign equivalents. The Federal Circuit has noted that such exceptions are rare but not well-defined. A Supreme Court ruling would provide much-needed guidance to the USPTO, ensuring consistent application of trademark laws.
The Broader Impact on Business Strategies
This case is not just about one brand's rights, it touches on broader implications for businesses globally. Companies adopting foreign words or phrases for their trademarks must now navigate a complex legal landscape where consumer perception and linguistic translation play pivotal roles in determining protectability.
In summary, Vetements' challenge to the Federal Circuit's decision is a crucial moment in trademark law. The Supreme Court's ruling will shape how foreign marks are evaluated, affecting not only international brands like Vetements but also the strategies of businesses worldwide in protecting their intellectual property. As the legal community waits with bated breath for the High Court's decision, one thing is clear: the doctrine of foreign equivalents remains a contentious and evolving aspect of trademark law.