Clothing by any other name: The Doctrine of Foreign Equivalents

Clothing By Any Other Name: The Doctrine of Foreign Equivalents

VETEMENTS, SAPORITO and GUEPARDO, do these words have any significance to you?   The U.S. Trademark Office (the “Trademark Office”) believes they do and has refused applications for each of these marks based on a doctrine that many applicants are often unfamiliar with, namely, the doctrine of foreign equivalents.  Under this doctrine, if a trademark contains a foreign word, the English translation of the foreign word may be used to determine whether the mark is generic, merely descriptive or confusingly similar with a prior trademark to refuse registration. 

Specifically, the Trademark Office held VETEMENTS, the French word for “clothing,” to be generic for the various clothing items recited in the application.   See In re Vetements Group AG, Serial Nos. 88944198 and 88946135, 2023 WL 3271156 (TTAB April 21, 2023) [not precedential].   Similarly, SAPORITO, the Italian word for “tasty” was held merely descriptive for dry sausage as recited in the application.  See In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985). GUEPARDO, the Spanish word for “cheetah” was held to be confusingly similar to a prior trademark registration for CHEETAH both for vehicle wheel tire products and related goods.  See In re Compass Automotive, Inc., Serial Nos. 87473737 and 87533115 (TTAB May 30, 2019) [not precedential]. In each case, the Trademark Office used the doctrine of foreign equivalents as a basis for refusal stating that a good number of the American public or the average American consumer upon seeing the foreign term would be familiar enough with the foreign term to translate it to English.  Exactly what is a “good number” or the “average American consumer” under the doctrine is not an absolute and has been put to test recently in regard to the VETEMENTS mark. 

The applicant of the VETEMENTS mark challenged the Trademark Office’s holding to the U.S. Court of Appeals Federal Circuit.  In its appeal, the applicant argued that the doctrine of foreign equivalents does not apply because the average American would not know the translation of the French word VETEMENTS.  However, in upholding the Trademark Office’s decision, the Circuit Court stated that French is a commonly used language in America so many would know its meaning, namely, “clothing” and Applicant did not meet the burden of proof to show that upon viewing the term the average American would not translate it to its English equivalent.  See In re Vetements Group AG, 2025 USPQ2d 775 (Fed. Cir. 2025). Even after the Circuit Court’s decision, the requirements to meet this burden of proof are unclear.   Which may be why the applicant, a high fashion company with strong brand recognition and trademark registrations for its mark overseas with much to lose by not registering its mark in the U.S., filed a request to the U.S. Supreme Court to review its case. Examples of the VETEMENTS brand clothing and other goods are shown below and can be found here.

While we wait to see whether the Supreme Court will consider the case and provide additional guidance, trademark owners are advised to conduct searches for translations of any foreign terms in their proposed marks before selection to avoid similar faux pas. 

Linda Monge Callaghan is a partner at Fishman Stewart, specializing in intellectual property law. Linda focuses mainly on trademark and copyright law, including foreign and domestic prosecution and litigation, as well as agreements and assignments.