At their first conference of the new year the US Supreme Court will consider a Swiss apparel maker's bid to reinstate its application to trademark "vetements" — the French word for clothing. A more recent Trademark Trial and Appeal Board ruling shows why some say the justice’s views on the doctrine of foreign equivalents are needed.
A finding by the US Patent and Trademark Office’s Trademark Trial and Appeal Board that “MERCI” and “DANKE” are dissimilar in sound, appearance and commercial impression is, on its own, unlikely to make waves.But a later holding in the same decision that the foreign words’ shared English meaning is conceptually weak when used in relation to certain goods — based, in part, on a truncated Google images search result — could be a different story.
“Consumers will not perceive the theme of saying ‘thank you’ with chocolate as a unique theme, but rather, would be influenced by the common, non-trademark use of ‘thank you’ in connection with chocolate,” the TTAB ruled.
That marked a loss couched within a win for applicant Florend Indústria e Comércio de Chocolates LTDA: although the Brazilian chocolatier successfully defended opposition by August Storck KG to its proposed stylized “DANKE” mark in International Class 30, Florend saw its fledgling mark stripped of any meaningful protection.
The German confectioner, meanwhile, stands to lose doubly under the panel’s rationale: it not only failed to stop “DANKE” from going on the Principal Register, the strength of its existing registrations in the same class for “MERCI,” “THANK YOU MEANS MERCI” and the like for chocolate bars and candies is now questionable at best.
Taken in the aggregate, the holding could “gut trademark rights,” warns Alice Denenberg, Trademark Partner at HPL Intellectual Property Law, with the TTAB "effectively imputing that THANK YOU isn’t a designator of a single source."
“I don’t like this decision at all. It doesn’t make any sense,” she added.
— ‘At face value’ —
The TTAB said it found support for its holding in In re: Vetements Group AG.
There, an examiner denied the Swiss apparel maker’s request to trademark “VETEMENTS” — the French word for “clothing” — in International Classes 25 and 35. The TTAB left the refusal in place and the US Court of Appeals for the Federal Circuit affirmed earlier this year, finding no error in the ultimate conclusion that the English translation would be generic for the goods singled out in Vetements Group’s applications.
Under the doctrine of foreign equivalents, word marks in a foreign language are assessed for distinctiveness and protectability under their English translation.
“Each mark is the same word as the genus of products in which the proposed marks appear: that is, Appellant’s ‘[s]hirts, skirts, sweaters, coats, jackets, suits, caps, headwear, hats, hoods, visors, scarves, gloves, shoes, boots, waist belts, t-shirts, pants, blouses, dresses’ in International Class 25 and ‘[o]nline retail store services for’ the same in International Class 35,” the Federal Circuit wrote.
“Because it is generic, the word ‘clothing’ is ‘incapable of indicating source,’” they said, citing their 2009 holding in In re: Hotels.com.
Vetements Group responded with a petition for writ of certiorari in August 2025, presenting the US Supreme Court with the following two questions for review: “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,” and “What is the proper test for determining genericness or descriptiveness of a non-English mark?”
The US Patent and Trademark Office fired back last month that “generic and merely descriptive terms are ineligible for registration as trademarks under the Lanham Act . . . and nothing in the Lanham Act or in governing precedent restricts that limitation to English language words.”
The justices last week said the case will be considered at their first conference of the new year, on Jan. 9, 2026.
— DuPont’s catch-all —
As with “vetements” and “clothing,” the TTAB found it likely US consumers would “stop and translate” the foreign words “merci” and “danke” as “thank you.”
Florend fought against that result, arguing in a trial brief “the typical doctrine of foreign equivalents case involves the comparison of one foreign-word mark to a mark written in English, and there is authority to suggest that the doctrine is operative only under those circumstances.”
The TTAB was unconvinced.
Although arising more often in the context of a conflict between English and foreign words, they noted that the doctrine has been applied previously in disputes involving two foreign marks, in cases like 1998’s Miguel Torres v. Casa Vinicola Gerardo Cesari and 1983’s In re: Lar Mor.
Accordingly, the TTAB ruled, “an appreciable number of U.S. purchasers are capable of translating MERCI and DANKE, and in the context of the marks’ use with chocolate, a purchaser with ordinary sensibilities would translate the wording.”
The TTAB then proceeded to an assessment of the In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) factors for likely confusion.
At factor one, they found “merci” and “danke” “look and sound nothing alike” and that those differences outweigh their identical English translation of “thank you.” At factor six, the TTAB sided with Storck, rejecting reliance by Florend on a single third-party registration for “MERCI” in connection with “sauces” — goods which could conceivably encompass chocolate — as dilutive of Storck’s existing marks.
Accordingly, they declared the sixth DuPont factor neutral because Florend failed to prove that “MERCI” is weak, commercially or conceptually.
But under the 13th DuPont factor, a catch-all which permits consideration of “any other established fact probative of the effect of use,” Florend’s submission of a Google image search showing a plethora of “thank you”-themed chocolates offered for sale was deemed relevant — and dispositive.
— Product images —
In a footnote, the TTAB elaborated that although search summaries “generally” have “limited probative value because they are not the websites themselves and the information is truncated,” Florend’s submission “is slightly different as it consists of image search results.”
“We find the uncontroverted Google® images search results that Applicant introduced more probative than a typical search summary because they (i) include product images from which we can ascertain the nature of the uses, (ii) identify the names of retailers, and (iii) in some instances suggest the chocolate is for sale (e.g., ‘in stock’),” the footnote said.
With those images in play, the TTAB declared “thank you” conceptually weak when used in connection with chocolate because consumers are “conditioned to seeing this phrase used as an expression of gratitude.”
“Weighing the factors, we conclude that the substantial differences in sound, appearance and commercial impression of DANKE and MERCI under the first factor coupled with the conceptual weakness of ‘thank you’ — the shared meaning of the terms and the only similarity between the marks — for chocolates under the thirteenth factor are dispositive and outweigh the other factors,” the panel ruled.
“We conclude that confusion is unlikely,” they said.
— Doctrine contravened —
The tension in their holding — that “merci” was not proven conceptually weak under the the sixth factor but its English translation is conceptually weak under the 13th factor — is difficult to reconcile and does not seem to align with the doctrine, according to Denenberg.
“Why did they not like the untranslated factor six evidence but they accepted the untranslated factor 13 evidence?” she asked.
At the same time, although guidance on the judicially-created doctrine could be beneficial, Denenberg predicts the petition by Vetements Group “is probably not the one.”
“In the end, they want a registration [for ‘VETEMENTS’] and I can’t imagine them getting one without disrupting a basic principle of trademark law, which is that you cannot monopolize generic terms regardless of the language,” Denenberg explains.
By contrast, she says the clash over “MERCI” and “DANKE” would likely represent a better vehicle for Supreme Court review of the doctrine — if the case continues to advance.
Storck’s window to notice an appeal to the US Court of Appeals for the Federal Circuit or to initiate a civil action in US district court closes Jan. 16.
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