To determine whether a trademark is registrable or whether it infringes the trademark rights of a senior trademark owner, the U.S. Patent and Trademark Office (“USPTO”) and courts, respectively, weigh various factors, called the “du Pontfactors,” to assess whether a likelihood of consumer confusion exists between the trademark and another mark, i.e., whether consumers would confuse the goods and/or services provided under the respective marks as coming from the same source. See, e.g., In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973); see also In re i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017). One important factor in this analysis is the similarities of the marks in appearance, sound, connotation, and commercial impression. See In re i.am.symbolic, llc, 866 F.3d at 1322–23.
A trademark that incorporates a word in a foreign language may be held confusingly similar to its English equivalent under what is called the “doctrine of foreign equivalents,” provided the foreign word is from a language that is familiar to an appreciable segment of American consumers, the relevant English translation is literal and direct, and no contradictory evidence of other relevant meanings exists. See TMEP § 1207.01(b)(vi); see also In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986) (holding LUPO for men’s and boys’ underwear, and WOLF and design for various clothing items, likely to cause confusion, because, inter alia, “LUPO” is clearly the foreign equivalent of the English word “wolf”). If the doctrine of foreign equivalents applies, all other relevant du Pont factors must still be considered in assessing whether there is a likelihood of confusion. See TMEP § 1207.01(b)(vi). In a recent opinion of the Trademark Trial and Appeal Board (the “Board”), which was re-designated as precedential on January 27, 2026, the Board confirmed the importance of assessing the other du Pont factors when applying the doctrine of foreign equivalents. See August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, 2026 USPQ2d 76 (TTAB 2025) [re-designated as precedential January 27, 2026].
In this case, opposer August Storck KG claimed the mark
for chocolate created a likelihood of consumer confusion with its registered mark MERCI also for chocolate. The Board found that the doctrine of foreign equivalents applied, as the evidence of record, specifically, U.S. English dictionaries defining the terms as foreign terms in common, modern languages of French and German, indicated that an appreciable number of U.S. purchasers are capable of translating the terms. The Board determined that the marks have the identical meaning of “thank you” and share the same connotation of gratitude. However, this was not the end of the analysis. In weighing the other factors, the Board found that (1) the marks are highly dissimilar in sound and appearance, (2) the marks have different overall commercial impressions because they are derived from different foreign languages and have distinct appearances and pronunciations, and (3) the shared meaning of “thanks” is widely used in connection with chocolate.
The Board found that factors 1 and 2 listed above “weigh strongly against a finding of likelihood of confusion,” which suggests that these factors alone could support an argument that there is no likelihood of confusion between foreign marks with identical meanings, though the presence of the third factor creates a stronger argument.
In assessing a likelihood of confusion, the strength of the marks is often a key consideration. A mark is typically considered weak if it includes terms that are commonly used or that have an easy-to-discern meaning in connection with the goods or services. Weaker marks are afforded narrower protection, so that minute distinctions with otherwise similar marks are given more weight in a likelihood of confusion analysis. See 2 McCarthy § 11:88 (4th ed. 2015); see also Fleetwood Co. v. Mende, 298 F.2d 797, 799 (1962) (“Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.”).
In this case, the Board did not merely consider the strength of the foreign terms themselves as trademarks, but also considered the strength of the English translation of the terms as it relates to the goods. While the foreign term MERCI was not found to be commonly used with chocolate, and thus not itself considered conceptually weak, the common use of “thank you” in connection with chocolate, particularly to convey a message of gratitude, supported the position that the meaning of the mark MERCI is conceptually weak, as consumers are conditioned to seeing this phrase used in relation to chocolate.
In weighing all of the relevant du Pont factors, the Board held that “the substantial differences in sound, appearance, and commercial impression of [DANKE] and MERCI…coupled with the conceptual weakness of ‘thank you’ — the shared meaning of the terms and the only similarity between the marks — for chocolates…are dispositive and outweigh the other factors,” leading to the conclusion that confusion is unlikely. This case is highly instructive when assessing a likelihood of confusion between marks with foreign terms. If the terms are derived from different foreign languages, they will likely be different in sound and appearance, and thus will have different commercial impressions. These cases could therefore turn on the strength of the shared meaning of the marks. When assessing these marks, it will be important to conduct an Internet search to determine whether the shared meaning is commonly used in connection with the goods and/or services provided under the marks. Of course, any other relevant du Pont factors cannot be ignored. For example, if one of the marks is famous, the outcome may be different. Each case will require a weighing of the facts and circumstances of the particular mark, but this precedential decision provides some clear guidance for a robust assessment of marks with foreign terms.
