Upon applying for U.S. trademark registration, there are many criteria your mark will have to meet before it is accepted by the examining attorney.

In cases under the doctrine of foreign equivalents, where an element of your mark appears in a foreign language, the requirement that a substantial portion of the relevant consuming public would likely be deceived raises special issues.

To make a determination about “a substantial portion” in such cases, the examining attorney must consider whether the foreign language place name would be recognizable as such to consumers who do not speak the foreign language, and/or whether consumers who speak the foreign language could constitute a substantial portion of the relevant consumers (e.g., because they are the “target audience”).

If an element of your mark is in a foreign language and when that element is translated into English, if it is determined that (1) the English equivalent does not meet the criteria for trademark registration and (2) the foreign language place name would be recognizable as such to consumers who do not speak the foreign language, and/or (3) whether consumers who speak the foreign language could constitute a substantial portion of the relevant consumers, your mark will be refused.

For example, if you tried to register the mark ZAPATAS for the manufacture or sale of shoes, this would more than likely be refused.  The word ZAPATAS is the Spanish word for “shoes”.  If you tried to apply for the mark “shoes” it would be refused based on descriptiveness.  Spanish is widely spoken in the U.S. and it is arguable that even those who do not speak Spanish fluently recognize Spanish words.  Therefore under the doctrine of foreign equivalents, your mark would not be eligible for trademark registration in the U.S.

For more information on whether your mark is eligible for trademark protection in the U.S. please contact us to conduct a trademark search.