The Doctrine of Foreign Equivalents at Death's Door

• Publication year: 2010

Serge Krimnus ⁰

The Federal Circuit, the Patent Office, and several regional circuits apply the trademark law doctrine of foreign equivalents. Under the doctrine, marks in foreign languages are translated into English and tested for the statutory bars to registration, instead of being tested in their original form. The doctrine is applied even in cases where only a negligible percentage of the purchasing public would be able to translate the foreign mark.

I argue that the Federal Circuit should abolish the doctrine of foreign equivalents from trademark law for two reasons. First, the doctrine violates directly applicable Supreme Court precedent, which rejects the doctrine. Second, the doctrine makes little sense as a matter of policy. It contravenes the basic goal of trademark law—to protect a substantial portion of the public—by allowing courts to refuse registration of marks where only a minuscule portion of the public would be confused, deceived, or otherwise affected by a mark. Moreover, the doctrine is unworkable because it lacks reasoning, creates confusion and is inconsistently applied by the courts.

I. Introduction

Imagine a state of the law where a trademark can be refused registration where less than a mere 0.01% of the purchasing public is confused by the mark.¹ Such a rule seems antithetical to the basic purpose of trademark law—"to protect the public's expectation regarding the source and quality of goods."² Unfortunately, this is exactly the current state of affairs under the doctrine of foreign equivalents.

In trademark proceedings before the United States Patent and Trademark Office (the "USPTO" or the "Patent Office") and in trademark infringement actions in federal courts, the judicially created doctrine of foreign equivalents generally applies to marks containing foreign words.³ Under the doctrine, words from common foreign languages are translated into English prior to being tested for the statutory bars to registration.⁴

I argue that in the Federal Circuit's recent In re Spirits International⁵ decision, the court sub silentio abolished the doctrine as it applies to one specific bar to registration—primarily geographically deceptively misdescriptive marks under subsection 2(e)(3) of the Lanham Act.⁶ Although the Spirits court expressly limited its analysis to primarily geographically deceptively misdescriptive marks,⁷ courts cannot justify refusing to extend Spirits' reasoning to other bars to registration.

I further argue that the doctrine of foreign equivalents should be abolished for two reasons. First, I argue that a nineteenth century Supreme Court decision—Menendez v. Holt⁸ —rejects the doctrine of foreign equivalents.⁹ Menendez has not been overruled or revisited by the Supreme Court, and no other court has questioned its validity in discussing the doctrine.¹⁰ Despite this fact, the Federal Circuit ignores Menendez and continues to apply the doctrine. The Federal Circuit must, under stare decisis, faithfully apply Menendez and abolish the doctrine.

Second, I argue that the doctrine makes little sense on policy grounds.¹¹ Since the goal of trademark law is to protect the public,¹² courts have long recognized the requirement of proportionality—that a substantial portion of the public must be confused, deceived, or consider a mark non-distinctive—for the relevant statutory bar to registration to apply.¹³ The doctrine of foreign equivalents disregards this long-standing principle and allows a mark to be refused registration where only an insignificant portion of the public can understand the mark and thus, consider it confusing, deceiving, or non-distinctive.¹⁴ Moreover, the doctrine is unworkable since nearly every aspect of it is confusing or unreasoned, and Spirits has caused the Patent Office to apply the doctrine differently depending on the bar to registration at issue.¹⁵

I conclude that the Federal Circuit should continue what it started in Spirits and apply stare decisis as well as policy considerations to abolish the doctrine of foreign equivalents in its entirety. In Part II, I discuss the development of the doctrine, including its history beginning in the late nineteenth century. In Part III, I focus on the modern doctrine. In Part IV, I discuss the

Federal Circuit's recent Spirits decision. In Part V, I discuss the aftermath of Spirits in the Patent Office, and in Part VI, I argue that both policy considerations as well as Supreme Court precedent mandate the abolition of the doctrine of foreign equivalents.

II. Development of the Doctrine

A. Development of the Doctrine in the Patent Office

Since the very inception of the doctrine of foreign equivalents, the Patent Office has been inconsistent in its application.¹⁶ In 1876, the Patent Office applied the doctrine for the first time. In Lawrence & Co.,¹⁷ the applicant attempted to register trademarks consisting of German words, which would be descriptive¹⁸ of the goods to a German speaker.¹⁹ The Commissioner, relying on the Supreme Court's seminal decision in Delaware & Hudson Canal Co. v. Clark,²⁰ explained that a mark may only be registered if it is "distinctive in its original signification."²¹ The Commissioner interpreted the Supreme Court's "original signification" language to mean that a mark containing foreign words should be translated and then tested for the bars to registration.²² Accordingly, the Commissioner translated the marks, held them to be descriptive, and affirmed the examiner's refusal of registration.²³

But in at least one early case, foreign words were considered registrable by the Patent Office. In 1894, in Ex parte Grove,²⁴ the Commissioner explained that the mark at issue is not registrable since it "is not a fanciful term, nor is it a foreign word,"²⁵ suggesting that all foreign words are per se registrable.²⁶ In 1902, however, the Patent Office inexplicably changed course and again applied the doctrine.²⁷ The Patent Office, without mentioning Grove or Lawrence,²⁸ and instead relying on one of the first federal cases to apply the doctrine, adopted the federal case's reasoning and applied the doctrine.²⁹ The Patent Office has not looked back since and, with few exceptions,³⁰ has continued to apply the doctrine.³¹ However, it was not until fifteen years after Grove that a court reviewing a decision of the Office would discuss the doctrine of foreign equivalents.³²

B. Development of the Doctrine in the D. C. Circuit and C.C.P.A.

Under the first modern federal trademark registration act (the "1905 Act"),³³ Congress vested the Court of Appeals for the District of Columbia with appellate jurisdiction over trademark-related appeals from the Commissioner of Patents of the USPTO (the "Commissioner").³⁴ In In re Hercules Powder Co.,³⁵ the applicant argued to the D.C. Circuit that the mark at issue would not be descriptive to a large percentage of consumers and therefore was registrable.³⁶ The court, however, held that if a word is descriptive, it may not be registered, even if a large percentage of consumers would not consider it so.³⁷ To further illustrate its point, the court extended its analysis to the use of descriptive words in foreign languages, and marked the first time a USPTO primary reviewing court³⁸ recognized the doctrine of foreign equivalents, albeit in dicta:

A descriptive word in a foreign language, though meaningless to the public generally, would fall within the statute, since it is the real signification of the word or device, and not the idea which it may, or may not, convey to the general public, which brings it within the [descriptiveness bar of the 1905 Act].³⁹

In 1929, Congress renamed the United States Court of Customs Appeals to the United States Court of Customs and Patent Appeals (the "C.C.P.A.") and vested in it the D.C. Circuit's former USPTO appellate jurisdiction.⁴⁰ The C.C.P.A. first addressed the issue of foreign equivalents in the highly influential case of In re Northern Paper Mills,⁴¹ in which the court discussed whether a foreign word could be descriptive despite the fact that "the English language is the language of the people" of this country.⁴² The C.C.P.A. surveyed the state of foreign equivalents law and held that the doctrine applies.⁴³ Northern Paper Mills also added an important exception to the doctrine—that it only applies to the "modern languages of the principal nations of the world."⁴⁴

Although the doctrine has been a part of trademark law for well over a century, most of its confusing exceptions and nuances have been developed over the past several decades by the Federal Circuit and the Patent Office's trademark tribunal, the Trademark Trial and Appeal Board (the "T.T.A.B." or the "Board").⁴⁵

III. The Modern Doctrine

A. In General

During the second half of the twentieth century, the doctrine of foreign equivalents was developed in the Federal Circuit⁴⁶ on appeal from refusals of registration and inter partes proceedings in the USPTO,⁴⁷ as well as in the T.T.A.B.⁴⁸ The doctrine is, in almost every respect, poorly reasoned, confusing, and inconsistently applied.

The leading foreign equivalents case, often cited by the Patent Office and district courts,⁴⁹ is Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772.⁵⁰ In Palm Bay, the Federal Circuit summarized the doctrine as follows: "Under the doctrine of foreign equivalents, foreign words from common languages are translated into English to determine the genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English word marks."⁵¹ The Federal Circuit also explained the circumstances in which the doctrine should be applied. Relying on an influential T.T.A.B. decision, In re Pan Tex Hotel Corp.,⁵² the court explained that the doctrine should only be applied "when it is likely that the ordinary American purchaser would 'stop and translate [the word] into its English equivalent.'"⁵³ The Palm Bay court, however, neither...