The Doctrine of Foreign Equivalents at Death's Door

Abstract

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.

Keywords: trademark, intellectual property, doctrine of foreign equivalents, patent office, federal circuit

JEL Classification: O34, K00, K11