Applications to register a trademark that includes non-English word involve some very complicated issues that require the assistance of knowledgeable legal counsel. It is also beneficial for people who are interested in registering this type of mark to understand some of the important details about how these marks exist.
Applications to register a trademark with non-English words must include an English translation of the foreign word, words, or compound words. Applications for a mark that includes non-Latin character must also include a translation of those characters. If no translation is intended by use of the non-Latin character, this must be mentioned in the application. The foreign equivalent of an English word or words is viewed in the same way as its English equivalent when deciding descriptiveness or similarity.
Research That Should Be Performed Involving Non-English Translations
If a person filing the application does not satisfy requirement, the person must then pay a processing fee to have their application reviewed as a regular application. As a result, lawyers must make sure to properly investigate foreign terms. Trademark librarians, translation branches, foreign language dictionaries, or search engines will be used to determine the meaning of the foreign mark. Once the meaning of the non-English term or terms is determined, these meanings will be compared against the use of the English translation in other marks.
As articulated in the case of Coach Servs Inc. v. Triumph Learning LLC, to determine if a foreign term is too similar to an English term, courts analyze whether the foreign word or words are familiar to an appreciable segment of American consumers. Similarly, if the translation of a foreign term is deemed to be generic then its English equivalent will be also be classified as too generic for trademark protection. It is important to note that this law is just a general guideline rather than strict rule. As a result, courts decide trademark similarly and protection on a case by case basis.
Exceptions to Translation Requirements
There are three different types of words that do not require translation, which include the following categories:
● Foreign Terms Listed in English Dictionaries. In most cases, it is unnecessary to provide translation of foreign terms if they appear in English dictionaries. If a term in an English dictionary is part of a phrase or expression, however, a translation of just the phrase required. A person would not be required to provide the meaning of each individual word because this would strip the phrase of its foreign meaning.
● Foreign Articles or Prepositions Used in Combination With English Terms. It is not necessary for a person to provide a translation of foreign articles or prepositions if they are used in combination with an English word.
● Words from Dead or Obscure Languages. It is rarely required for a person to translate words from dead or obscure languages. To determine if a language is “dead” is decided on a case by case basis and influenced by the meaning that the term would have to the consumers who would purchase the product.