Vetements Group AG v. Coke Morgan Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director, United States Patent and Trademark Office

Under the Lanham Act, 15 U.S.C. § 1051 et seq., no mark shall be refused nationwide protection as a registered trademark on account of its nature unless, inter alia, a mark is: (i) descriptive and lacks acquired distinctiveness; or (ii) generic, regardless of whether the mark has acquired distinctiveness. Descriptiveness and genericness of a non-English mark is currently determined based on its English translation when applying a judicially created guideline referred to as “the doctrine of foreign equivalents.” When a court or the United States Patent and Trademark Office elects to invoke this doctrine, protectability of a non-English mark is dictated by its English translation, rather than the non-English mark on its face (without English translation).

1. Whether protection of a non-English mark is controlled by consumer perception of the mark taken at face value or controlled by its English translation.

2. What is the proper test for determining genericness or descriptiveness of a non-English mark?