Tuesday, July 19, 2005

In a Citable Decision, TTAB Reverses Surname Refusal of "FIORE"

In a citable (but questionable) decision, the Board applied the doctrine of foreign equivalents in reversing a Section 2(e)(4) refusal of the mark FIORE for sports bags, purses, and other goods in class 18. The Board concluded that FIORE, an Italian word meaning "flower," is "the type of term that potential customers would stop and translate," and therefore that FIORE is not "primarily merely a surname." In re Isabella Fiore, LLC, 75 USPQ2d 1564 (TTAB 2005).

The PTO established a prima facie case under Section 2(e)(4) by submitting more that 5,000 database and Internet hits establishing that FIORE is not a rare surname, along with "negative" dictionary evidence showing that FIORE has no meaning in English. The Board agreed with the PTO that FIORE has the "look and feel" of a surname, but did not "think this factor strongly favors the examining attorney's position." Applicant Isabella Fiore, LLC did not dispute "that the word FIORE is a surname."

Applicant contended, however, that FIORE "has an alternative, recognized meaning: it means 'flower' in Italian," and it submitted evidence that "Italian is increasingly popular as a language for study and practice in the United States, such that a 'beginner word' like 'flower' would be readily understood by a wide variety of people."

For the Board, the question was "whether we can consider the meaning a surname has in a foreign language in our surname analysis." Observing that the TTAB applies the doctrine of foreign equivalents in Section 2(e)(1) mere descriptiveness cases and in Section 2(d) likelihood of confusion cases, the Board held that "whether a term is primarily merely a surname must take into consideration the meaning the term has in a foreign language."

Applying the doctrine of foreign equivalents, the Board found that "'Fiore' is an Italian word that is listed as the only translation of the common English word 'flower.' It is the type of term that potential customers would stop and translate. Italian, as a major, modern language, is not an obscure language such as Old English." The Board had no doubt that "the term would be recognized as the Italian word for 'flower.'"

"When we consider the common meaning of 'Fiore' in Italian, we conclude that it does have a meaning that detracts from the surname significance of the term. The term does not have such an obvious 'look and feel' of a surname that potential purchasers would overlook its Italian language meaning."

Noting that any doubt on the issue must be resolved in favor of the Applicant, the Board reversed the refusal to register.

TTABlog comment: Balogna? Section 2(e)(4) bars registration of a mark that is "primarily merely a surname." It doesn't say "primarily merely a surname, unless the mark comprises a foreign word that translates into a common English term." Here, the PTO established that FIORE is not a rare surname and has no other meaning in English other than as a surname. Applicant conceded that it is indeed a surname. The Board recognized that it has the "look and feel" of a surname, but then downplayed that factor. Instead it gave decisive weight to the fact that "fiore" means "flower" in Italian.

What the Board failed to do is consider the purpose of Section 2(e)(4) and how the doctrine of foreign equivalents jibes with that purpose. When foreign words are translated into English for purposes of Section 2(e)(1) or Section 2(d), the goal presumably is to protect those Americans who are knowledgeable about the foreign language: in the former case, to make sure that words that they would find descriptive remain unregistered, and in the latter case to keep off the Register marks that they would find confusingly similar to another registered mark. The purpose of Section 2(e)(4), derived from common law principles, is to keep surnames free for use by those having the particular surname in question, without the threat of an infringement charge by a registration owner. The Board makes no mention of protection of those interests, but instead blindly imports the doctrine of foreign equivalents into the Section 2(e)(4) analysis.

Doesn't the word "primarily" merely anything in Section 2(e)(4)? Surely it means that, although a term may have some other meanings (including meanings in a foreign language), if its primary meaning is that of a surname, it should not be registrable (absent proof of secondary meaning, or course). Here, in light of the PTO's evidence, the Applicant's concession that FIORE is a surname, and the Board's recognition that FIORE has the "look and feel" of a surname, can there be any doubt that FIORE, based on this record, is primarily merely a surname? There is no evidence that a substantial number of Americans would recognize FIORE as meaning "flower." There is no evidence that "fiore" is a foreign word that has been adopted into the English language (like, say, "balogna"). What is the basis for concluding that its translated meaning "flower" is more significant than its surname meaning?

The Board cited Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee EN 1772, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005)[a Section 2(d) case] for the proposition that "[t]he doctrine should be applied only when the ordinary American purchaser would stop and translate the word into its English equivalent." Where is the proof that the ordinary American purchaser would translate FIORE into "flower"? Does the Board really believe that the average American purchaser of sports bags and purses knows the Italian language, or even the rudiments of Italian? [I am reminded of the H.L. Mencken quip: "the average American is below average."]

In the Board's recent uncitable LATAS decision (blogged here), it took into account the translation of "latas" from Spanish as "tin cans," but there the Board also found that LATAS was a "very rare surname" and that it did not have the "look and feel" of a surname. In sharp contrast, FIORE was found not to be a rare surname and it was found to have a surname's "look and feel."

It seems to me that only in cases like the LATAS case should the foreign meaning be decisive. It should not have been decisive here without real proof that "flower" is the primary meaning of FIORE to the ordinary American purchaser.

Text Copyright John L. Welch 2005. All Rights Reserved.


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