TTAB Test: SOLIS Means Sun In Latin - Is It Primarily Merely a Surname?
The USPTO refused to register the mark SOLIS for agricultural machinery, deeming the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that the doctrine of foreign equivalents applies, and that "solis" means "sun" in Latin, thus immunizing the mark from the surname ban. How do you think this came out? In re International Tractors Ltd., Serial No. 86838500 (March 30, 2018) [not precedential] (Opinion by Jyll Taylor).
The Board first considered the frequency of, and the public's exposure to, SOLIS as a surname. Various online databases showed that at least 60,000 individuals in the USA have the surname SOLIS. The Internet included references to, inter alia, Hilda Solis, former Secretary of Labor and California Congresswoman, and Sammy Solis, a former pitcher with the Washington Nationals. The Board found that "this evidence demonstrates that SOLIS is used as a surname across the country, and that it has received a good deal of exposure."
There was no evidence that anyone connected with applicant has the surname SOLIS. Negative dictionary evidence, however, showed that SOLIS has no meaning other than as a surname.
Applicant maintained that SOLIS has a meaning in Latin that the purchasing public would recognize and that is unrelated to any alleged surname significance: “[t]he term ‘SOLIS’ is a rather widely known Latin word with a well understood meaning. *** In Latin, the term ‘SOLIS’ can mean ‘sun’ or ‘sunlight,’ depending on whether the term was used with other Latin words.”
The Board observed that the doctrine of foreign equivalents may be applied to words or terms from common languages. It is "a guideline, not an absolute rule, and is applied only when it is likely that "the average American purchaser would 'stop and translate' [the term] into its English equivalent."
Examining Attorney Daniel E. Donegan asserted that "Latin is considered a dead language which consumers would not be expected to stop and translate." The evidence supported that conclusion, and applicant conceded that Latin is not routinely spoken in this country.
The TMEP states that "Latin is generally considered a dead language." Nevertheless, "if evidence shows that the Latin term is still in use by the relevant purchasing public (i.e., if the term appears in current dictionaries or news articles), then this Latin term would not be considered dead." Section 1207.01(b)(vi)(B). [In other words, literary rigor mortis would not have set in - ed.].
Applicant did not provide any evidence regarding the number of persons in the United States who have knowledge of Latin, nor any evidence showing that "solis" is a term that is in use in the context of its Latin meaning. The Board noted that at its own website, applicant "apparently finds it necessary to educate the public to the non-surname meaning of "solis."
In sum, Applicant’s evidence, consisting mostly of unsubstantiated argument, falls far short of establishing that the Latin language is still in use by any number of ordinary American purchasers and, accordingly, it is unlikely that speakers of Latin will stop and translate SOLIS immediately to “sunshine.” Instead, they would perceive its primary significance as that of a surname. For these reasons, the doctrine of foreign equivalents is not appropriate in this case.
Finally, as to whether SOLIS has the look and sound of a surname, the evidence was inconclusive, and so the Board brushed this factor aside.
Having no doubt regarding the Section 2(e)(4) refusal, the Board affirmed.
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TTABlog comment: Quod Erat Demonstrandum? By the way, I think the Board should have said that the doctrine doesn't apply because Latin is not a common, modern language. Whether the word "solis" has been adopted into English is a different question, and here the answer was no.
Moreover, even assuming arguendo that Latin speakers would "stop and translate," what about the other 99% of Americans who would not understand the Latin word and would perceive the mark only as a surname? Shouldn't the surname refusal protect them?
Text Copyright John L. Welch 2018.
posted by John L. Welch @ 4/03/2018
9 comments
9 Comments:
Latin is NOT a dead language in the Catholic Church. If the product had been intended for use by Church members, the discussion and result might have been different.
Ironically, Wikipedia defines Solis as "a Spanish name derived from Latin sol solis, literally meaning sun." So the definition states that it is a surname, but origin of the surname, namely the word sun (pun intended), is important enough to note and may in fact be part and parcel of the surname.
Latin is, of course, still taught in many schools. But surely the vast majority of Americans would not translate SOLIS as "sun." Even with my four years of high school Latin, and attendance at innumerable masses in Latin, I would not think of the latin word "sol" when seeing it used as a mark for tractors. But suppose the mark was for missals?
The Board did note the Wikipedia entry, but pooh-poohed it. In any case, what difference does it make what the derivation is? The question is what do Americans perceive?
Interesting. I've never met nor heard of a Solis person and Solis immediately conjures up the sun in my mind.
Too bad--good name for ag equipment.
To be fair, a Wikipedia article helps to shape what Americans perceive and believes. It is like ignoring a dictionary definition and saying who cares what the dictionary says because it is merely a question of what Americans perceive.
Wikipedia entries may be edited at will by anyone. No comparison with a recognized dictionary or other reference work. And in any case, I repeat, what difference does it make what the derivation of the word is?
I think the examiner is a baseball fan and immediately recognized SOLIS as a surname because of the National's pitcher (I think he is still pitching on the Nationals).
Not relevant to your post, but Sammy Solis is a current Washington Nationals pitcher (pitched yesterday, in fact).
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