Thanks, But No Thanks: Foreign Equivalents, Descriptiveness, & Genericness

By: Kristie M. Blase

Introduction

Brand owners love foreign‑language marks because they can sound distinctive and sophisticated while hinting at the product’s qualities. “MERCI” for chocolates is a textbook example. But as the Federal Circuit’s In re Vêtements decision and the TTAB’s decision in August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA show, there are hard limits on how far those rights stretch—especially when the translation edges towards everyday, descriptive, or generic language. The doctrine of foreign equivalents operates with the distinctiveness and genericness analyses and has direct implications for brand strategy.

The Doctrine of Foreign Equivalents

The doctrine of foreign equivalents is a tool courts and the USPTO use when a mark is in a foreign language that many U.S. consumers are likely to stop and translate. If ordinary American consumers familiar with the foreign language would translate the term into English, the legal analysis should consider the English meaning alongside the original wording. The doctrine applies to the distinctiveness, descriptiveness, genericness, and likelihood of confusion analyses.

Decision‑makers ask whether a substantial portion of relevant U.S. consumers would actually translate the term, considering factors like the language’s prevalence, the nature of the goods, and how the mark is used in context. A Spanish word for a common food item, used for that food, is more likely to be translated than an obscure term or a word used fancifully. Even when the doctrine applies, translation is only one piece of a fact‑intensive inquiry. And, when there is a well-established alternative English meaning, the doctrine does not apply at all and no translation is necessary.

Merci vs. Danke: Same Meaning, Different Marks

In August Storck KG v. Florend, the owner of the well‑known MERCI chocolate brand opposed registration of DANKE for chocolates and chocolate bars. Both terms mean “thank you”—MERCI in French, DANKE in German—and both appear on sweet confections. On paper, that sets up a textbook foreign‑equivalents argument: if consumers translate both to “thank you,” aren’t the marks conceptually identical?

The TTAB’s answer underscores that translation is only one part of the analysis. First, MERCI and DANKE look and sound quite different: they share no letters, have different syllable counts, and create distinct aural impressions, and they invoke different linguistic and cultural associations (French versus German), even if the underlying sentiment is the same. Even assuming some U.S. consumers would translate each to “thank you,” the Board asked whether that shared meaning overwhelms those visual and phonetic differences in the minds of ordinary purchasers, and concluded it does not.

The decision also highlights the limits of conceptual similarity when the shared concept is itself a common phrase. “Thank you” is an everyday expression, not a fanciful idea that uniquely links two brands in consumers’ minds. That makes MERCI’s conceptual space narrower than that of a more arbitrary foreign‑language mark; the more ordinary the translated concept, the harder it is to claim broad exclusive rights to it, even across languages.

When Translation Drifts Toward Generic: The Vêtements Decision

The Merci/Danke dispute sits in the middle of the spectrum: both marks are foreign‑language expressions with an ordinary meaning, but each still functions as a source indicator for sweets. At one end of the spectrum lies In re Vêtements Grp. AG, where the Federal Circuit affirmed refusal registration of VÊTEMENTS for clothing as generic because of it means clothing in French.

In Vêtements, the foreign equivalents doctrine drove the analysis: translated, the mark directly named the genus of the goods, so it behaved like the English word “clothing” for clothing. The more likely consumers are to translate and understand the term as the common name of the product, the more it operates as a generic or descriptive term and the less trademark protection it can obtain. The Supreme Court’s denial of cert reinforces the doctrine: foreign‑language terms that translate directly to the product category (like clothing or vêtements) or a generic term (like lollipop or chupa) cannot be registered.

Alternative Meaning

At the other end of the spectrum is KAHWA, registered for cafés and coffee shops. Kahwa is a specific type of Kashmiri green tea, and kahwa also means coffee in Arabic, but the Federal Circuit reversed the Board’s rejection of registration of KAHWA in In re Bayou Grande Coffee Roasting Co. The Court found no evidence that Kahwa was generic for cafés and coffee shops, no evidence that selling kahwa is a key aspect of those services, and no evidence that any U.S. café or coffee shop had actually sold kahwa such that customers would immediately expect it from a café.

Critically, because KAHWA has a well-established alternative meaning in English—Kashmiri green tea—the Court held that the doctrine of foreign equivalents did not apply as a matter of law and no translation was required. Instead of treating KAHWA as an Arabic word for coffee and translating it, the Court treated it as an English-language term with its own meaning in the U.S. marketplace.

The Sliding Scale: From Distinctive to Generic Through Translation

Translation can cut both ways for foreign language marks in the U.S. For MERCI and DANKE, translation pushed the marks toward a shared, somewhat weaker conceptual space but does not erase their ability to identify source. For VÊTEMENTS, translation collapsed the mark into the generic product name, eliminating distinctiveness altogether. For KAHWA, translation never entered the picture at all because of an independent, established English-language meaning in the U.S. market.

These cases illustrate a sliding scale along which foreign‑language marks move. At one end are fanciful or arbitrary foreign‑language marks that do not translate to anything descriptive of the goods; they are the strongest and least vulnerable to descriptiveness or genericness attacks, though foreign equivalents may still matter for confusion analysis. In the middle sit marks like MERCI and DANKE: terms with ordinary, non‑product meanings (polite phrases, common adjectives) that, once translated, may modestly narrow scope but do not strip the mark of source‑identifying function. Overly‑aggressive enforcement—especially across languages—risks running into the reality that competitors may freely use ordinary expressions in different linguistic dress.

At the far end are marks like VÊTEMENTS, where translation reveals that the foreign word is essentially the product name; once the doctrine applies, the mark stands or falls with its English equivalent, so if “clothes” is generic for clothing, “VÊTEMENTS” is too. The doctrine itself does not move marks along this scale; the underlying meaning and usage do, but the doctrine forces brand owners and courts to address that meaning in English, which can be clarifying—or fatal.

Practical Guidance for Brand Owners and Counsel

Treat foreign‑language marks as if they are also the English counterparts. When vetting a proposed mark, translate it and ask whether the translation is generic, descriptive, laudatory, or merely informational. A term that translates to “shoes,” “clothing,” or “beer” is a poor candidate for long‑term exclusivity or meaningful rights.

Consider how ordinary the translated meaning is. A mark that translates to “thank you” or “happy” may be registrable, but it will likely live in a crowded conceptual space and support only modest enforcement claims, particularly against other foreign‑language marks that convey the same sentiment in different words. Setting those expectations with clients early can prevent disappointment when enforcement turns out to be narrower than the marketing team hoped.

Focus on the total commercial impression, not just shared translation. Visual, phonetic, and contextual differences may outweigh conceptual similarity where the shared concept is common, as with MERCI and DANKE. Enforcement strategies that rely solely on the fact that two marks mean the same thing risk overreach and reputational blowback, especially when the translation points toward ordinary language rather than distinctive branding.

When building a portfolio, balance foreign‑language flair with conservative practices. One approach is to pair a foreign‑language mark whose English translation is somewhat ordinary with a more distinctive house mark or logo, strengthening the overall brand identity even if the word element alone proves narrow. Another is to test consumer perception where possible: do U.S. customers actually translate and understand the foreign word, or does it function more like an arbitrary and fanciful term in the U.S. market?

Above all, treat the foreign equivalents doctrine as a reminder that trademarks are not created in a linguistic vacuum. As markets globalize and consumers become more multilingual (assisted by translation tools in their pockets), the practical line between foreign-language and English-language erodes. A foreign‑language mark that seems clever today may be tomorrow’s generic. Brand owners should know when to say thanks to foreign‑language creativity—and when to say no thanks to marks that translate too closely to the goods themselves.

About the Author

Kristie M. Blase is a shareholder at Frazer + Blase, P.C., a corporate law firm with offices in New York and Houston.