Trademarking Foreign Words: Non-Latin Characters
In a recent ZVMLaw blog post, we discussed the topic of accents and cedillas—also known as “diacritics”—in trademarks and concluded that such diacritics, which appear in the USPTO’s list of standard characters, should be included when applying for a trademark in a foreign language that utilizes them.
In addition to diacritics, the USPTO’s list contains every letter from the Latin alphabet (also called the Roman alphabet) as well as Arabic numerals. These letters and numbers are used in most of the world’s languages, from every country in the Americas and Europe to most countries in Africa and even some in Asia.
But what if the word you want to trademark contains characters from a foreign language that doesn’t use the Latin alphabet? For example, what if you want to trademark a word written in Chinese or Arabic?
Because a standard character trademark—what we think of as a traditional “word” trademark—requires that all letters and words in the mark be Latin characters or Roman or Arabic numerals, you can’t include any characters from other types of foreign languages in an application for a standard character mark. But that doesn’t mean you can’t register a trademark with non-Latin characters. Enter the design trademark.
A design trademark—also known as a “special form” mark—typically contains stylistic elements separate from a word itself. But it can also serve as a vehicle for applying for a trademark with characters from non-Latin foreign languages. With a design trademark, you can trademark Chinese, Arabic, or any other non-Latin character words.
Keep in mind, however, that as is the case with any applied-for mark in a foreign language, you may need to accurately describe the translation of the proposed trademark. This is because of the Doctrine of Foreign Equivalents. The Doctrine of Foreign Equivalents explains that the examining attorney at the USPTO might consider whether the term has any meaning in a foreign language. This is intended to protect consumers from confusion or deception caused by the use of terms in different languages. The examining attorney will only apply the rule when it is likely that an ordinary American purchaser would stop and translate the foreign word into its English equivalent. As a result, you might need to include the translation of the foreign word in the application—and failure to do so when necessary may result in additional fees.
If you have questions about trademarking a foreign word, we’re here to help. We regularly help clients—from individuals to small and large companies—protect their IP assets. Feel free to contact us if we can be of assistance.