Foreign words in US marks: KAHWA and the doctrine of foreign equivalents

A business entering the United States often brings a brand that works at home: a word in its own language, or in another language that sounds good to its customers. The USPTO examines that word in English. Under the doctrine of foreign equivalents, "foreign words used as a mark are translated into English and then tested for genericness and descriptiveness" (In re Bayou Grande Coffee Roasting Co., No. 2024-1118, slip op. at 9 (Fed. Cir. Dec. 9, 2025)). The same translation applies when marks are compared for likelihood of confusion under §2(d) (TMEP §1207.01(b)(vi); for descriptiveness, §1209.03(g)). Every application must state an English translation of any non-English wording (37 C.F.R. §2.32(a)(9)). The translation is often the first thing an examining attorney uses.

The rule and its limit

The doctrine applies when the "ordinary American purchaser" would "stop and translate" the word (Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 1377 (Fed. Cir. 2005)). That purchaser "includes all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English" (In re Spirits Int'l, N.V., 563 F.3d 1347, 1352 (Fed. Cir. 2009)). The doctrine does not apply when the word would be taken at face value. One example is when it "has such a well established alternative meaning that the literal translation is irrelevant" (id.). Words from common modern languages are generally translated.

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VETEMENTS: the burden is on the applicant

In In re Vetements Group AG, 137 F.4th 1317 (Fed. Cir. May 21, 2025), the applicant, a fashion company, sought to register VETEMENTS, French for "clothing," for clothing and for retail clothing services. The Board applied the doctrine. It found French to be a widely spoken and widely taught language in the United States, translated the mark, and held it generic and merely descriptive without acquired distinctiveness. The Federal Circuit affirmed. It also stated a guiding principle that now governs every such case: "the burden is on the party opposing translation to show that it is unlikely the ordinary American purchaser would stop and translate the word into its English equivalent." The applicant petitioned the Supreme Court. The petition argued in part from USPTO v. Booking.com B.V., 591 U.S. 549 (2020), that consumer perception, not translation, should control. The Court denied certiorari on January 12, 2026 (No. 25-215). The doctrine stands as the Federal Circuit stated it.

KAHWA: evidence still decides

Later that year the same court reversed a refusal, and the reasons are instructive for anyone with a foreign-word mark.

Bayou Grande had used KAHWA for coffee shops in the Tampa Bay area since 2008 and had grown to fourteen locations. It applied in 2021 for "cafés and coffee shops." The examining attorney refused registration as generic and merely descriptive, translating KAHWA as Arabic for "coffee." Bayou disputed that translation. It also argued that KAHWA has an established English meaning: a traditional Kashmiri green tea. The examining attorney then added refusals based on the tea meaning. The Board affirmed on the tea meaning alone and did not decide the Arabic question.

The Federal Circuit reversed on every ground (slip op. at 5–10).

• Not generic. A term can be generic for retail services if it names "a key aspect" of them (In re Cordua Restaurants, 823 F.3d 594, 603 (Fed. Cir. 2016)). But there was "no record evidence of any café or coffee shop in the United States ever selling kahwa." Consumers' understanding of the word as a tea was "insufficient to establish genericness for cafés and coffee shops selling coffee and other kinds of tea."
• Not merely descriptive. For the same reason, the record did not show that selling kahwa is a characteristic of cafés. The Director's argument that cafés might sell it in future was "pure speculation." The court also rejected the concern about granting a monopoly over a word. Bayou would have rights against a café named KAHWA, "not . . . against a café simply for selling kahwa."
• No translation at all. The parties agreed that KAHWA has a well-established alternative English meaning. That made the doctrine of foreign equivalents inapplicable "as a matter of law." The court decided the point itself, although the Board had not reached it. With no refusal left, the court reversed outright rather than remanding.

Two things follow. First, an alternative English meaning can take a word outside the doctrine entirely. That is the Spirits exception, now applied. Second, a refusal based on what a foreign word means must still connect that meaning to the actual goods or services with evidence from the US market.

Two foreign marks, compared in English

The Board has since applied the doctrine where both marks are foreign. In August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, Opp. No. 91277224 (TTAB Nov. 14, 2025, redesignated precedential Jan. 27, 2026), a German confectioner opposed a Brazilian chocolatier's stylized DANKE for chocolate, relying on MERCI. The Board found that "an appreciable number of U.S. purchasers" would translate both words as "thank you" and applied the doctrine. It nevertheless dismissed the opposition. The marks differ markedly in sound and appearance, and "thank you" is "widely used in the industry and pervasively associated with chocolate," so a shared meaning was not enough.

In Cielo e Terra, S.p.A. v. Hoteles y Viñedos del Valle de Guadalupe S.A. de C.V., Opp. No. 91287216 (TTAB Sept. 3, 2026) (precedential), an Italian winery opposed a Mexican winery's O EL CIELO VALLE DE GUADALUPE for wine, relying on its registered CIELO. The applicant argued that "cielo" means "sky" or "heaven" in Spanish and Italian. It said third-party SKY marks for wine showed CIELO was weak. The Board declined to count the SKY registrations under the sixth DuPont factor because none contained the shared element CIELO. It left open that a different record might justify translating third-party marks (slip op. at 27–28 & n.29). It sustained the opposition.

What foreign applicants and their counsel should do

Practice suggestions; the editors' view.

1. Translate before choosing. Check the mark's meaning in every language commonly spoken in the United States, not only the language it comes from. A term coined at home may mean something here.
2. Give an accurate translation, and say when there is none. The translation statement under §2.32(a)(9) is evidence. If the word has no meaning in any language, say so. If it has more than one meaning, consider which is relevant to the goods.
3. Know which side bears the burden. After Vetements, the applicant must show that ordinary US purchasers would not translate. Useful evidence includes an established alternative English meaning (as in KAHWA), context that makes translation unlikely, or the obscurity of the language.
4. Tie the meaning to the market. If a refusal rests on a translation, test whether the record shows that the translated term names or describes something actually sold under the identified goods or services in the United States. KAHWA succeeded on exactly that gap.
5. In §2(d) cases, look past meaning. Storck shows that a shared meaning can be outweighed by differences in sound and appearance and by the weakness of the shared concept. Cielo shows that third-party registrations must share the actual element in dispute.
6. Expect the US-counsel rule. Applicants domiciled outside the United States must be represented by a US-licensed attorney (37 C.F.R. §2.11(a)). In practice, that attorney is the one who will answer a translation-based refusal.

This is general information, not legal advice. The Before You File guide on choosing a strong mark explains where a word sits on the distinctiveness spectrum. For filing from abroad, see first to use, first to file.