[E-trademarks] CORRECTED REPLY: RE: Doctrine of Foreign Equivalents When Presenting Evidence to Show Weakness

Thu Dec 11 14:24:52 EST 2025

Instead of "stop and translate," can we convince the TTAB to use 
"recognize the meaning" instead?

Pam

Pamela S. Chestek
Chestek Legal
4641 Post St.
Unit 4316
El Dorado Hills, CA 95762
+1 919-800-8033
pamela at chesteklegal.com
www.chesteklegal.com

On 12/11/2025 11:08 AM, Welch, John L. via E-trademarks wrote:
>
> CORRECTED:
>
> My two cents:
>
> I think the answer is yes, to some extent.
>
> Suppose the word is the Spanish word verdad, meaning truth.
>
> American consumers who do not know Spanish would not “stop and 
> translate,” so there would be no effect on them.
>
> American consumers who know only Spanish would not be affected, since 
> they can’t translate the word to English
>
> American consumers who speak English and are knowledgeable in Spanish 
> would “stop and translate,” so to them the term would be weakend.
>
> Does that make any sense? Don’t blame me. Blame the doctrine of 
> foreign equivalents.
>
> JLW
>
> **
>
> 	
>
> *John L. Welch*
>
> *Senior Counsel***
>
> Admitted to Practice:Massachusetts, New York, and Washington, DC
>
> jwelch at WolfGreenfield.com <mailto:jwelch at WolfGreenfield.com>
>
> Tel. 617.646.8285
>
> <http://thettablog.blogspot.com/>
>
> 	
>
> *Wolf, Greenfield & Sacks, P.C.*
>
> BOSTON | NEW YORK | WASHINGTON DC
>
> wolfgreenfield.com 
> <https://www.wolfgreenfield.com/><https://www.linkedin.com/company/wolf-greenfield/><https://twitter.com/wolfgreenfield>
>
> *Please consider the environment before printing this email.*
>
> **
>
>
> /This e-mail message and any attachments may contain confidential or 
> privileged information. If you are not the intended recipient, please 
> notify me immediately by replying to this message and destroy all 
> copies of this message and any attachments. Thank you./
>
> *From:*Welch, John L.
> *Sent:* Thursday, December 11, 2025 2:04 PM
> *To:* For trademark practitioners. This is not for laypersons to seek 
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Lauren A. Malone Esq. <Lauren at lamaloneesq.com>
> *Subject:* RE: Doctrine of Foreign Equivalents When Presenting 
> Evidence to Show Weakness
>
> My two cents:
>
> I think the answer is yes, to some extent.
>
> Suppose the word is the Spanish word verdad, meaning truth.
>
> American consumers who do not know Spanish would “stop and translate,” 
> so there would be no effect on them.
>
> American consumers who know only Spanish would not be affected, since 
> they can’t translate the word to English
>
> American consumers who speak English and are knowledgeable in Spanish 
> would “stop and translate,” so to them the term would be weakend.
>
> Does that make any sense? Don’t blame me. Blame the doctrine of 
> foreign equivalents.
>
> JLW
>
> **
>
> 	
>
> *John L. Welch*
>
> *Senior Counsel***
>
> Admitted to Practice:Massachusetts, New York, and Washington, DC
>
> jwelch at WolfGreenfield.com <mailto:jwelch at WolfGreenfield.com>
>
> Tel. 617.646.8285
>
> <http://thettablog.blogspot.com/>
>
> 	
>
> *Wolf, Greenfield & Sacks, P.C.*
>
> BOSTON | NEW YORK | WASHINGTON DC
>
> wolfgreenfield.com 
> <https://www.wolfgreenfield.com/><https://www.linkedin.com/company/wolf-greenfield/><https://twitter.com/wolfgreenfield>
>
> *Please consider the environment before printing this email.*
>
> **
>
>
> /This e-mail message and any attachments may contain confidential or 
> privileged information. If you are not the intended recipient, please 
> notify me immediately by replying to this message and destroy all 
> copies of this message and any attachments. Thank you./
>
> *From:*E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On 
> Behalf Of *Lauren A. Malone Esq. via E-trademarks
> *Sent:* Thursday, December 11, 2025 10:35 AM
> *To:* For trademark practitioners. This is not for laypersons to seek 
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Lauren A. Malone Esq. <Lauren at lamaloneesq.com>
> *Subject:* [E-trademarks] Doctrine of Foreign Equivalents When 
> Presenting Evidence to Show Weakness
>
> Good morning all,
>
> In presenting evidence to the USPTO of third-party use to show a term 
> is weak and entitled to only a narrow scope of protection, does the 
> doctrine of foreign equivalents apply? The weak term is a Spanish term 
> and I’ve found 15 non-registered third-party uses (only 1 registered 
> use). However, its English translation has more widespread usage, both 
> in registered and non-registered marks. Would it help my case to show 
> extensive use of its English translation?
>
> /Lauren A. Malone, Esq./
>
> Law Office of Lauren A. Malone, LLC
>
> (623) 267-5924 Ext. 101
>
> www.lamaloneesq.com <http://www.lamaloneesq.com/>
>
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