VETEMENTS Applicant Files Certiorari Petition Seeking Reversal of Genericness Refusal Under Doctrine of Foreign Equivalents

Applicant Vetements Group AG has filed a petition for writ of certiorari at the Supreme Court [pdf here], seeking to overturn the refusals to register the term VETEMENTS (in standard character and slightly stylized form) for various clothing items and for related retail store services, on the ground of genericness. The TTAB affirmed the refusals [TTABlogged here], and the CAFC upheld the Board's decision. In re Vetements Group AG, 2025 USPQ2d 775 (Fed. Cir. 2025) [precedential]. [TTABlogged here].

QUESTIONS PRESENTED

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?

At the CAFC Vetements disputed the Board's finding that the ordinary American purchaser would stop and translate the marks because there was no showing that a majority of Americans are capable of translating the word. The court rejected that proposed test, "which is tantamount to the threshold ordinary American purchaser under the doctrine of foreign equivalents requiring a headcount to determine the foreign language skills of the median American purchaser in every case." Instead, the court ruled that "[i]t is enough to demonstrate that an “appreciable” number of Americans are capable of translating the term VETEMENTS from French into English."

EXCERPT FROM PETITIONER'S STATEMENT

The doctrine of foreign equivalents, as applied in the decision below, departs from this Court’s determination in Menendez v. Holt, 128 U.S. 514, 520 (1888) (finding that a registration of a non-English mark was valid considering, in part, because it was “a fancy name, and in a foreign language”). This doctrine also departs from a bedrock principle of the Lanham Act, which requires that consumer perception of a mark controls whether the mark is registrable. United States Pat. & Trademark Off. v. Booking.com B. V., 591 U.S. 549, 560 (2020) (“[W]hether a term is generic depends on its meaning to consumers. That bedrock principle of the Lanham Act is incompatible with an unyielding legal rule that entirely disregards consumer perception.”).

Along with Petitioner’s case presenting an opportunity to reaffirm or clarify how this Court’s Menendez decision impacts the protectability of non-English marks, Petitioner’s case presents an opportunity to resolve a split in the circuits and the TTAB as to the treatment of foreign terms in non-English marks and the impact of consumer perception when determining protectability of non-English marks. In observance of this Court’s Menendez decision, the Fourth Circuit focuses on consumer perception of a non-English mark, while the Second and Fifth Circuits translate a non-English mark as a matter of course. The Federal Circuit has articulated another test but, as reflected in the decision below, translates any foreign term in a modern language even if substantially less than 1% of the United States population understands such language, absent a few limited exceptions.

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TTABlogger comment: I would like to see the Supreme Court clarify the doctrine of foreign equivalents. I doubt that it will take up the case, but who knows. America first?

Text Copyright John L. Welch 2025.