Can a Foreign Language Word Get a Trademark Protection?
When a company files an intent-to-use application under 15 U.S.C. 1051(b)(1) in order to register a term, the word cannot be descriptive or deceptively misdescriptive of the company’s good or service. An issue can arise when the applied for word is also a foreign language word. Its English translation can play a pivotal role in the trademark application and review process.
For example, In Re Bayer Aktiengesellschaft, Serial No. 78/212,751 (US Ct. App.), Bayer applied to register the term Aspirina in connection with its analgesic products. However, the application was denied on the grounds it was merely descriptive, as Aspirina is the Spanish word for the generic word “aspirin”. The examining attorney made this argument by using an online foreign language translation of the word.
Bayer responded, arguing the online foreign language translation was incorrect. In support of its argument, Bayer offered foreign language translation evidence showing that, in fact, the majority of Spanish speakers understand Aspirina to refer to Bayer’s analgesic products. In other words, within the Spanish language, the term is similar to such terms as Kleenex, Jell-O or Band-Aid.
All of these product names have earned a generic application to all similar products. However, this language-specific treatment of a term cannot be understood by a mere automatic translation, or machine translation of a word, but, instead, only through a foreign language translation provided by a professional technical translator, who is familiar with the term’s use within a language and culture.