That Other Doctrine of Equivalents – The Trademark One
Patent attorneys are familiar with the doctrine equivalents in determining infringement, that a claim that is not literally infringed can still be infringed if a feature of the accused product is equivalent, “a substitute element [that] matches the function, way, and result of the claimed element,” in a way that does not play “a role substantially different from the claimed element.” Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 40, (1997). But trademark law has its own doctrine of equivalents – the doctrine of foreign equivalents. That trademark doctrine was at issue in a recent Federal Circuit case, In re Vetements Group AG, No. 2023-2050 (May 21, 2025).
The doctrine of foreign equivalents provides that non-English words in a trademark may be first translated into English before determining if the mark is descriptive or generic. Akin to Captain Barbosa’s view of the Pirates Code in Pirates of the Caribbean,[1] “the doctrine of foreign equivalents is not an absolute rule, but merely a guideline,” TMEP 1209.03(g). The TMEP indicates that the doctrine should be applied when “the ordinary American purchaser would stop and translate the foreign word into its English equivalent.” Id. Thus “an examining attorney will generally apply the doctrine when the relevant English translation is literal and direct, the term comes from a common, modern language, and there is no contradictory evidence of another relevant meaning.” Id. (The doctrine is also applicable in determining likelihood of confusion between marks. TMEP 1207.01(b)(vi).)
Vetements Group sought to register the mark VETEMENTS for various articles of clothing and for retail store services for these articles of clothing. Vêtements is a French word meaning “clothes” or “garments.” Applying the doctrine of foreign equivalents, the Examining Attorney at the USPTO rejected the application on the ground that the mark (as translated into English) was generic, or in the alternative merely descriptive, in connection with the goods and services described in the applications. The TTAB affirmed on appeal, and Vetements Group appealed to the Federal Circuit.
Vetements Group contended that the doctrine of foreign equivalents was being misapplied in rejecting their applications to register VETEMENTS. It argued that the circumstances were such that the mark should not have been translated into English, because the ordinary consumer would not stop and translate the term, and because the term would be considered arbitrary and fanciful.
The Federal Circuit rejected these arguments, and found the (translated) mark generic, and therefore ineligible for protection. First of all, it observed that French is a well-known modern language, the second most widely taught language in American schools. Further, the context in which the term is used makes it likely the French word would be translated by a consumer. Where the goods and the meaning of the foreign term are related it is more likely that a consumer would stop and translate the term. Of course here the two are very closely related.
Once the term is translated, it is easily seen that it is a generic term, one “that the relevant purchasing public understands primarily as the common or class name for the goods or services,” TMEP 1209.01(c). “Clothing” as a mark for clothing, and retail stores selling clothing, is about as generic as a mark can get. Generic terms are “the ultimate in descriptiveness,” and cannot be registered as marks, regardless of whatever secondary meaning (connection in the minds of the consuming public with the source of the goods and/or services) the terms may have acquired. As a result the refusal to register VETEMENTS was upheld.
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[1] “The code is more what you'd call 'guidelines' than actual rules."