809.01 Examining Applications for Marks Comprising Non-English Wording that Do Not Include an Accurate Translation or Transliteration
In order to properly examine applications with non-English wording, the translation and transliteration of the non-English wording must be determined prior to performing a search of the mark. This is critical because the foreign equivalent of an English term may be regarded in the same way as the English term for purposes of determining descriptiveness, requiring disclaimer, and citing marks under §2(d) of the Act (see, e.g., TMEP §§1207.01(b)(vi), 1209.03(g)).
Therefore, if there is no translation and/or transliteration in the initial application, the examining attorney should ascertain the meaning of non-English wording before searching the mark.
The examining attorney may obtain the meaning of non-English wording through sources such as foreign language dictionaries and search engines. The examining attorney may also consult the Trademark Librarian or the Translations Branch, as appropriate.
If research by the examining attorney, the Trademark Library, and/or the Translations Branch indicates that the term has no meaning or no clear and exact equivalent in a foreign language, although no inquiry regarding the meaning in a foreign language is necessary, the examining attorney has the discretion under 37 C.F.R. §2.61(b) to make such an inquiry. If no inquiry is made, the examining attorney must enter a Note to the File in the record indicating that the term was checked for a translation. In such cases, a statement regarding meaning must not be entered for printing in the Official Gazette. See TMEP §809.01(a) regarding when an inquiry is made.
If the examining attorney determines the meaning of the non-English term(s), he or she must search the terms as they appear in the application, the transliterated terms, and the English translation(s) for the terms, as applicable. The examining attorney must also require (under 37 C.F.R. §2.61(b) ) that an accurate translation be made of record by the applicant using the researched translation or other accurate translation provided by applicant. If the applicant disputes a translation obtained through online resources, the examining attorney should supplement the record with evidence from the Trademark Librarian and/or the Translations Branch.
If the translation is provided or supplemented after the examining attorney has conducted a search for conflicting marks, the examining attorney must conduct a new search of the transliterated terms and/or the English translation(s) for the terms, as applicable.
809.01(a) Inquiry/Applicant’s Response Regarding Meaning in a Foreign Language
If it is necessary to make a separate inquiry regarding the meaning of non-English wording, the examining attorney should provide the applicant with the correct format for a translation or transliteration statement. See TMEP §809.03. If a general inquiry is made regarding meaning under 37 C.F.R. §2.61(b) (i.e., whether the term has significance in the relevant trade, any geographical significance, or any meaning in a foreign language), the applicant’s response may not be in the correct format for the translation or transliteration statement. When an applicant’s response to an inquiry regarding the meaning of non-English wording includes statements that are not related to the translation or transliteration of such wording, the examining attorney must ensure that only statements regarding the translation or transliteration are entered in the relevant Trademark database using the appropriate format for printing on any registration certificate that may issue. See TMEP §809.03.
Similarly, if the applicant responds to an inquiry regarding non-English wording that "the mark has only trademark significance," or in some similar manner, the examining attorney must not enter the statement in that form in the Trademark database. Instead, the examining attorney must ensure that the statement is reformatted appropriately, to reflect that the wording has no meaning, in the relevant Trademark database for printing. See TMEP §809.03. It is not necessary to issue an examiner’s amendment in such cases.
809.01(b) Limited Exceptions to Rules for Translations
There are three limited exceptions to the general rule requiring that all foreign wording be translated. See TMEP §§809.01(b)(i)–809.01(b)(iii).
809.01(b)(i) Foreign Terms Appearing in English Dictionary
It is generally unnecessary to provide a translation of a foreign term if the term appears in an English dictionary (e.g., croissant, fiesta or flambé). However, if a term that appears in the English dictionary appears in a mark as part of a foreign idiomatic phrase or other unitary expression, a translation of the idiomatic phrase or unitary expression is required. It would be illogical to break the phrase into its individual word elements and to translate only the individual words that do not appear in the English dictionary. Such a translation would serve no useful purpose because it would not convey the true commercial impression of the phrase.
Example: If the mark included the phrase "la fiesta grande," an appropriate translation would be "the great celebration" or possibly "the great fiesta." It would be inappropriate to translate only "la" and "grande." The ultimate goal is to provide a translation that reflects the true meaning of the non-English wording in the mark and the commercial impression made by the entire phrase. See TMEP §809.02 regarding equivalency in translation.
809.01(b)(ii) Foreign Articles or Prepositions Combined with English Terms
It is generally unnecessary to provide a translation of foreign articles or prepositions, such as "de," "le," "la," or "il," when combined with English terms, because their meaning is generally understood and, in this context, they are being used to convey an impression different from their foreign meaning. For example, in the mark "LE CASE," it is unnecessary to translate "LE."
809.01(b)(iii) Words from Dead or Obscure Languages
It is generally not necessary to translate words from dead or obscure languages. Cf. Gen. Cigar Co. v. G.D.M. Inc., 988 F. Supp. 647, 660-61, 45 USPQ2d 1481, 1491-92 (S.D.N.Y. 1997) (finding applicant had no obligation to disclose that the term COHIBA for cigars means "tobacco" in the language of the Taino Indians in the Dominican Republic, because cigar smokers in the United States would not be aware of such a meaning). See TMEP §§1207.01(b)(vi) and 1209.03(g) regarding the applicability of the doctrine of foreign equivalents to words from dead or obscure languages. The determination of whether a language is "dead" must be made on a case by case basis, based upon the meaning that the term would have to the relevant purchasing public.
Example: Latin is generally considered a dead language. However, if there is evidence that a Latin term is still in use by the relevant purchasing public (e.g., if the term appears in news articles), then a Latin term is not considered dead. The same analysis should be applied to other uncommon languages.