Wednesday, July 13, 2005

TTAB Reverses Surname Refusal Of "LATAS" For Avocado Rootstocks

Applying the standard Section 2(e)(4) test of In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995), the Board reversed a Section 2(e)(4) refusal to register the mark LATAS for "avocado trees, namely, avocado rootstocks," finding the mark not to be primarily merely a surname. In re Hans Merensky Holdings (Pty) Ltd., Serial No. 76528639 (June 28, 2005) [not citable].

The Board first found that LATAS is a "very rare surname." The Examining Attorney located "no more than 80 or so examples of the LATAS surname ... through extensive searches," including only one example from New York City, one from Los Angeles, and none from Chicago.

Applicant Merensky Holdings represented that no person connected with it has the surname LATAS. It claimed that the mark was chosen because of its Hungarian meaning: "sight or vision." Applicant also noted the Spanish translation, meaning "can." Thus, Applicant argued, "the term has recognized meaning other than as a surname, and ... such meanings are more common than the surname that the Examining attorney has unearthed." The Examining Attorney, in turn, discounted the Hungarian meaning and asserted that dictionaries provided no other significant meaning for the word.

Dr. Hans Merensky

The Board agreed with Merensky Holdings. It took judicial notice of a Spanish-English dictionary definition of "lata" as "tin can." The PTO's own Google evidence indicated that this Spanish meaning of LATAS is "significant."

"Of the twenty [Google] results, there are only two people named Latas mentioned.... On the other hand, as many as 12 of the twenty results appear to refer to the Spanish word LATAS. This evidence alone is at least sufficient to cast serious doubt with regard to the the contention that the primary significance of LATAS is as a surname."

Given the wide familiarity with Spanish in the United States, the Board found it appropriate to consider the Spanish meaning of LATAS under the doctrine of "foreign equivalence." [sic].

Finally, the Board found that LATAS does not have the "look and feel" of a surname because it saw no evidence that LATAS resembles a common surname in structure and pronunciation.

The Board concluded that Applicant had overcome the PTO's prima facie showing. At a minimum, Applicant's evidence raised serious doubts that must be resolved in its favor.

TTABlog comment: The PTO could have done a better job on the "look and feel" issue. The term LATAS immediately brought to my mind two people of some notoriety: USA soccer player Alexi Lalas, and movie star Fernando Lamas. LATAS certainly has the same structure and general pronunciation as Lalas and Lamas. Maybe the latter are not "common surnames," but perhaps the "famousness" of these two people would count for something. I wonder what the folks at Ladas & Parry think about this look-and-feel issue?

Text Copyright John L. Welch. All Rights Reserved.


At 6:31 PM, Anonymous Anonymous said...

i'm a Latas and there are actually quite a lot of us. just saying the attornies didn't search TOO hard!


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