Trademark Translation and the Donkey Kong Effect

We’ve blogged about trademark translation, patent and technical language translation services in the context of the doctrine of foreign equivalents. In anticipation to an upcoming video-game, Nintendo filed a trademark registration application for the mark “It’s on like Donkey Kong”. The reason why this move raised eyebrows in the legal world is that this phrase has become a well-entrenched part of the common lexicon, thus raising the question, will the common use of a phrase have an effect on one’s ability to register a mark?

Further, Nintendo’s ability to register the mark could be affected by a finding that the mark is either merely descriptive or generic. Marks that describe the intended purpose, function or use of goods, the size of the goods, desirable characteristics of the goods, the nature of the goods or the end effect on the user all fall under this category and thus not registrable. The same is true for marks that are merely self-laudatory and descriptive of the alleged merit of a product. However, if secondary meaning is established, these types of marks can be registered.

This all raises interesting questions. If a phrase is in a foreign language, what effect does this have on registerability? Is a foreign language translation of a mark still a mark? What if a phrase is considered generic or descriptive – or tied to a cultural meaning – in one language but not the other?

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