Lost in Translation: What the TTAB's DANKE vs. MERCI Ruling Means for Non-English Trademarks

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Two European chocolate companies. Two foreign-language words. Both meaning "thank you." One Trademark Trial and Appeal Board precedent that just changed how brands navigate the doctrine of foreign equivalents.

If you have built an international brand, own a name that resonates in multiple languages, or occupy space that even touches non-English markets, the August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA decision is worth your time. The TTAB's recent precedential ruling did more than resolve a trademark dispute between German and Brazilian chocolate makers. It reframed a doctrine that had been operating under a simpler, more rigid application for decades. The doctrine of foreign equivalents now works differently in likelihood-of-confusion cases than it does in distinctiveness cases. That matters.

The Story: MERCI Meets DANKE

August Storck KG is a well-established German confectioner with deep roots in European markets. The company is known for MERCI, its line of premium chocolates. In French, merci means thank you. The brand name carries that meaning. Consumers in French-speaking markets see MERCI and understand the undertone of gratitude inherent in the brand identity. The mark, despite its translated meaning, had achieved strong recognition and distinctiveness through longstanding use and investment.

Florend Indústria e Comércio de Chocolates LTDA is a Brazilian chocolatier that decided to register DANKE for its own chocolate products. Danke is the German word for thank you. Florend was not trying to trade on Storck's reputation. It was simply choosing a word that, in German-speaking markets, carries the same general concept as MERCI does in French-speaking ones.

Storck opposed. The argument was straightforward: both DANKE and MERCI translate to the same English word. Both are marks for the identical product—chocolates. Both mean thank you. Consumers who knew one or both languages would be confused. They would think the goods came from the same source. Likelihood of confusion was inevitable.

The TTAB disagreed. It permitted Florend to register DANKE. The decision does not say that shared meaning between foreign marks is irrelevant. It says something more precise and more useful: the doctrine of foreign equivalents does not operate the same way when you are analyzing likelihood of confusion between two non-English marks that both translate to a concept unrelated to the goods themselves.

The Doctrine of Foreign Equivalents: The Traditional Rule

Before diving into what changed, it helps to understand what the doctrine of foreign equivalents does.

When a mark is in a foreign language, U.S. courts and the USPTO translate it into English. They then assess that English translation for distinctiveness and for likelihood of confusion, just as they would assess an English-language mark. The logic is straightforward: an American consumer who speaks or recognizes the foreign language will understand the translated meaning. If the translated meaning is descriptive of the goods or services, the mark describes them. If the translated meaning is the same as a competing mark's translation, confusion is possible.

This doctrine came into the modern trademark canon because it prevents brand owners from evading the distinctiveness and similarity requirements by simply shifting to a foreign language. A company cannot do with the word shoe in German what it cannot do with the word shoe in English. The doctrine keeps things level.

But the traditional application of the doctrine was blunt. Foreign equivalents were assessed as if they were English words. If ZAPATOS (Spanish for shoes) was not distinctive for shoes, then neither was any other language's version of the same concept. If two marks translated to the same English word, likelihood of confusion analysis was nearly automatic.

That rigidity is what TTAB has now qualified.

The TTAB's Refinement: Distinctiveness vs. Likelihood of Confusion

The August Storck decision distinguishes between two contexts in which the doctrine of foreign equivalents applies.

First: distinctiveness analysis. When a non-English mark translates directly to the goods or services it identifies—think a German company trying to register the word for chocolate on chocolate products—the doctrine remains fully operative. The mark is descriptive in any language. The difficulty of establishing distinctiveness does not disappear because you picked a foreign language. The TTAB has not softened this ground.

Second: likelihood of confusion analysis between two non-English marks that do not describe the product itself. This is where the TTAB drew the new line.

August Storck involved two marks—MERCI and DANKE—that both translate to a common concept: thank you. Neither mark describes chocolates. Neither mark is purely descriptive in the trademark sense. They are suggestive, at worst. They convey a feeling or attitude toward the product, not the product itself. In this context, shared translated meaning is a factor in the likelihood-of-confusion analysis. But it is not the decisive factor. It is one consideration among many: actual use and recognition in the relevant markets, whether consumers have encountered both marks, whether there is actual confusion evidence, the degree of similarity in the marks beyond translation, and the sophistication of the typical consumer in the goods' market.

The TTAB emphasized that the doctrine of foreign equivalents was not designed to collapse the entire likelihood-of-confusion framework into a single variable. When two marks both translate to a concept that does not define the product, the presence of that shared meaning does not make confusion automatic. The marks may still be registrable side by side, as they were here.

What Changed and Why It Matters

This ruling comes at a moment when the U.S. Supreme Court itself has been considering the doctrine of foreign equivalents. The issue is percolating upward. Trademark owners, international brands, and anyone whose mark has meaning in multiple languages need to understand what has shifted.

First, the analysis is now more granular. A shared translation between two foreign marks is no longer enough, by itself, to block registration or guarantee that an opposition will succeed. A full likelihood-of-confusion inquiry remains necessary.

Second, the distinctiveness of the marks in their respective markets matters more. If Storck had not already built significant recognition and goodwill in MERCI before Florend sought to register DANKE, the analysis might have differed. Conversely, if Florend's use of DANKE had already created significant marketplace presence or recognition before the opposition, that too would have weighed in the analysis. The doctrine of foreign equivalents no longer reduces the analysis to translation alone.

Third, the sophistication of the relevant consumer base comes into sharper focus. Trademark law has always recognized that confusion analysis depends on the average consumer of the goods in question. For luxury chocolates, the consumer is reasonably sophisticated. For generic commodity goods, less so. The August Storck decision suggests that the doctrine of foreign equivalents must account for consumer sophistication: would the typical luxury chocolate consumer actually believe that DANKE and MERCI came from the same source, or would they recognize them as separate, albeit thematically similar, offerings?

Fourth, actual marketplace presence and evidence of real-world confusion carry more weight. The TTAB did not find that Storck had demonstrated that any actual confusion existed or was likely to exist in markets where both marks coexisted. Speculation about confusion, divorced from evidence of actual marketplace behavior, is less persuasive than it once was.

Practical Implications for Your Brand

If you own a non-English mark, or if your mark has meaning in another language, several takeaways apply.

If you are defending a trademark opposition or seeking to register a non-English mark, the August Storck decision narrows the automatic grounds for rejection based on foreign equivalents alone. Similarity in translation is no longer dispositive. Your argument can now rest on distinctiveness, market presence, consumer sophistication, and actual marketplace behavior. These are facts you can develop and present.

If you are the party opposing a mark that translates similarly to your own non-English mark, relying on the doctrine of foreign equivalents as your sole or primary ground is now weaker than it was before. You will need to develop evidence about actual confusion, recognition in the relevant markets, the sophistication of the consumer base, and the degree to which the two marks have already achieved separate identities in the marketplace.

If you are an international brand owner considering whether to oppose a competitor's foreign-language mark in your product category, the calculus has changed. Opposing on the basis of foreign equivalents alone is less likely to succeed. You may need to establish actual confusion, significant prior use and recognition, and a strong case that consumers would conflate the marks despite their different languages and origins. The expense of an opposition proceeding is now a heavier weight in the decision to pursue one.

If you are seeking a commercial license from a licensor to use a foreign-language mark in a new territory, the August Storck decision suggests that similar foreign-language marks in the same or nearby product category may coexist lawfully. The blocking risk is lower than trademark owners had assumed.

The Bigger Picture

The August Storck decision reflects a broader maturation in trademark doctrine. The law is moving away from categorical rules and toward more fact-intensive, context-driven analysis. The doctrine of foreign equivalents is no longer a blunt instrument that translates a mark and declares it identical to every other language's version of the same concept. Instead, it is a tool for understanding how consumers perceive and understand marks that exist across linguistic boundaries.

This evolution also acknowledges a commercial reality: the world is multilingual, brands are international, and the same idea or word will have resonance in multiple markets and multiple languages. A trademark system that prevents companies from using similar ideas in different languages simply because they translate the same way imposes a cost on brand owners without necessarily serving consumers. If consumers can distinguish between a German chocolate brand and a Brazilian one, even when both mean thank you, why should the law forbid it?

That does not mean free rein. Distinctiveness remains a hurdle. Actual confusion is still a concern. But the path forward is now less automatic, more evidence-based, and more favorable to brand owners who have built recognition and goodwill in non-English markets.

What You Should Do Now

If you are a brand owner with a non-English mark or a mark with meaning in another language, audit your trademark portfolio. Identify marks that may translate similarly to competitors' marks in the same or related markets. Consider whether those competitors might have filed oppositions or might be planning to. The August Storck decision may have shifted those disputes in your favor, but only if you understand the new framework and can present evidence of actual market presence, consumer recognition, and distinctiveness.

If you are facing an opposition based on foreign equivalents, the new framework is your friend. Develop evidence about market presence, consumer behavior, and actual confusion. Show that the marks have achieved separate identities despite similar translations. The TTAB's decision creates space for that argument.

If you are planning to register a non-English mark, understand that the analysis is now more nuanced. Translation similarity is no longer automatically fatal, but distinctiveness and market evidence remain critical. Plan accordingly.

For trademark disputes involving non-English marks, international brands, or marks with meaning across multiple languages, the August Storck decision reflects a meaningful shift in how the doctrine of foreign equivalents operates. The doctrine of foreign equivalents remains part of trademark law, but it is now a more sophisticated tool—one that turns on evidence, context, and marketplace reality rather than on translation alone.

If you need guidance on opposing a foreign-language mark, defending a registration based on foreign equivalents, or navigating the TTAB doctrine of foreign equivalents in your own brand portfolio, Jonathan Phillips can help. He represents clients in trademark disputes, oppositions, and cancellation proceedings before the TTAB, and understands how the TTAB doctrine of foreign equivalents now applies in the post-August Storck landscape. Contact him at jlap@pb-iplaw.com or (309) 643-6518 to discuss your case.