Nowadays, brands are not limited to a single language or national audience. Companies increasingly register trademarks not only in English, but also in Spanish, Italian, French, German, Chinese, and many other languages.
Sometimes business owners choose names that come from their native language other than English. Sometimes a foreign word simply sounds more distinctive, elegant, or memorable.
However, there are cases when it turns out that there is already another registered trademark in English that is identical to your trademark in a foreign language (e.g., Blue Sea for clothing and footwear, and Mar Azul (“blue sea” in Spanish) for footwear).
This raised the following questions:
- Can I register my trademark in a foreign language if there is already a similar registered mark with the same meaning in English?
- If I received an Office Action because my trademark is similar in English translation to another mark, how should I respond?
When You File a Trademark in a Foreign Language
The USPTO Examiner often uses the Doctrine of Foreign Equivalents to compare it with existing marks. This doctrine means that foreign words from other languages may be translated into English to determine whether a mark is confusingly similar to another mark
However, the doctrine is not applied to every foreign language. It usually applies to common, modern languages (e.g., Spanish, Italian, Chinese, Japanese), that are spoken or understood by a noticeable group of U.S. customers.
If a language is dead (Latin), rare or not widely known in the United States, the doctrine is less likely to apply. Therefore, the main issue is whether an ordinary American purchaser knows the language and would actually translate the word into English. Trademark Manual of Examining Procedure (TMEP) § 1207.01(b)(vi)
If the Examiner determines that the language is commonly spoken in the U.S., the mark may be translated into English to check for identical or similar marks. If such marks exist, you may receive a refusal in your trademark application.
Client Success
This was the case with the trademark BOGAT, filed for online retail store services featuring books, candles, jewelry, clothing, bags, and other goods. The Applicant’s Mark BOGAT is a word from the Croatian language meaning “rich”.
After filing the trademark application to register the trademark BOGAT, the USPTO refused registration due to a perceived likelihood of confusion with the earlier registered trademark RICH for the following reasons:
- The doctrine of foreign equivalents should be applied in the present case, as Croatian is a common, modern language in the United States. As a result, the mark BOGAT should be translated into English, meaning “rich”, and, therefore, both marks (BOGAT and RICH) are confusingly similar.
- The Client’s online retail store services presumably encompass all services of the registrant’s, and, thus, they are closely related.
As a BOGAT trademark representative, Mariya Ortynska responded to the Office Action by addressing the following factors:
The Doctrine of Foreign Equivalents is not Applicable in the Present Case: According to official statistics released by the U.S. Census Bureau in 2025, there are too few Croatian speakers in the United States to apply the doctrine of foreign equivalents. The proportion of the population that speaks Croatian amounts to 0.015% of the total population subject to the study and 0.07% of the population that speak a language other than English at home. Thus, it is unlikely that an ordinary American purchaser knows Croatian language and would actually translate the word “BOGAT” into English. Moreover, there are other relevant meanings for the subject term: mark BOGAT means not only “rich”, but also “wealthy” and “abundant”. Therefore, the meaning of the term can change based on how it is used.
The Marks Are Dissimilar When Considered as a Whole: The presence of a design in registered mark and the absence of it in Applicant’s mark, combined with entirely different wording (“BOGAT” and “RICH”), ensures that consumer perception of the marks is different, and the overall commercial impressions are distinct.
The Nature of the Services Is Markedly Different: The Applicant has narrowed the list of services, which reinforced the distinctiveness of services featuring different products by each mark. Moreover, the parties’ services differ not only in nature but also in purpose and market orientation.
As a result, the Examiner confirmed that the doctrine of foreign equivalents is not applicable in the present case, the mark BOGAT should not be translated into English, and, therefore, the likelihood of confusion refusal was withdrawn.
Due to a favorable response from the USPTO, the BOGAT trademark gained the opportunity to proceed toward registration.
Five years in the making… and now it’s OFFICIAL.
Huge thank you to Mariya Ortynska, Esq. for getting my trademark APPROVED for a brand I’ve poured my heart, vision, and consistency into for the past 5 years. This isn’t just paperwork — this is protection. This is positioning. This is POWER.
Securing my trademark changes the game. It allows me to protect my interests, safeguard what I’ve built, and confidently expand knowing my brand is legally mine. We’re not just building businesses — we’re building generational wealth and legacy.
Grateful for my incredible law team and the hard work behind the scenes. The future just got even brighter, and this is only the beginning.
Here’s to ownership, elevation, and expansion. The best is yet to come.
– shared Faith Zingoni, BOGAT Owner
You May Also Be Interested
Office Action can arise for various reasons, such as a likelihood of confusion with an existing mark, descriptiveness, or other issues addressed by the Examiner. While they may seem challenging, many refusals can be overcome with a carefully prepared complex response that addresses the Examiner’s concerns. Ortynska Law provides guidance throughout this process by drafting and filing arguments designed to increase the chances of successfully registering the trademark. You can find detailed information on the likelihood of confusion in the article: How to Reduce the Risk of Trademark Refusal Based on Likelihood of Confusion.
If you receive an Office Action and need legal consultation or assistance in responding, book a consultation with Ortynska Law to receive a tailored strategy.
Prior results do not guarantee a similar outcome.