Friday, January 22, 2010

WYHA? TTAB Affirms Section 2(e)(4) Surname Refusal of "WEIS" for Frozen Dairy Products

The Board not surprisingly affirmed a Section 2(e)(4) refusal to register the mark WEIS in the design form shown below, for frozen dairy products. More than four thousand household listings for "Weis," coupled with the fame (believe it or not) of recently deposed Notre Dame football coach Charlie Weis, convinced the Board that Weis is not a rare surname. Rumbling through the Benthin factors, the Board found that Examining Attorney Daniel S. Brody had made a prima facie case under 2(e)(4), which Applicant failed to rebut. In re Weis Australia Pty Ltd, Serial No. 79047172 (January 20, 2010) [not precedential].

The Board repeated its usual mantra that "there is no minimum number of listings needed to prove that a mark is primarily merely a surname." Here, the number of residential listings were enough to sway the Board that Weis "is not an especially rare surname."

Citing In re Gregory, the Board noted that "large numbers of individuals in the United States would be exposed to the name of the Notre Dame head football coach in sports programming and news." [Not any more - ed.] In short, according to the Board, "WEIS is not rare [how about medium rare? - ed.] when viewed as a name repeated in the media in terms of public recognition." [For my criticism of Gregory see part IV of this article - ed.].

Charlie Weis

No one associated with Applicant Weis has the surname Weis. [Really? Where did the name come from, I wonder - ed.]. As to other recognized meanings, the Examining Attorney submitted negative dictionary evidence [I always think of "negative dictionary evidence" as white print on black pages - ed.] showing no entries for "Weis."

Applicant contended that WEIS has other recognized meanings because "it is used as an acronym in different contexts." Citing something called the Acronym Attic, it provided several examples, and it also pointed to a radio station called "WEIS 990 AM radio" (the voice of Cherokee County, Alabama).

The Board noted that six of the seven acronym listings were "unverified," and it was not clear that the seventh ["World Event Interaction Survey"] is "well recognized to potential consumers of applicant's goods." It was simply not persuaded that "WEIS primarily will be viewed or understood by purchasers as an acronym or radio station call letters rather than for its surname significance"

Turning to the fourth factor, the Board, with another nod to Charlie Weis, found that WEIS has the look and feel of a surname.

Finally, the design portion of the subject mark is "certainly not fancy, and unlike in In re Benthin, supra [highly stylized oval design], the carrier or background design is not so unusual or distinctive to create a non-surname significance."

And so the Board affirmed the refusal.

TTABlog comment: Well, would you have appealed?

BTW, when I hear the name "Weis," I think of former White Sox second baseman Al Weis, who later achieved some glory with the 1969 World Series Champion New York Mets.

Text Copyright John L. Welch 2010.


At 8:35 AM, Blogger Frank said...

Despite my inclination to view all 2(e)(4) refusals skeptically, I think the TTAB got this one right. WEIS is primarily merely a surname in the minds of the U.S. public. I loved your comments though. I think I'll use "medium rare" in my next 2(e)(4) response.

At 10:32 AM, Anonymous Mike Brown said...

If the applicant didn't have a surname in mind, what was the purpose of the apostrophe in the mark? Unless I read the specimen incorrectly, they're not trying register WEIS as an acronym for some set of words, but Weis' - as in something belonging or pertaining to someone named Weis. That, alone, should have shot down the argument that Weis was not intended to be a surname.

At 12:50 PM, Blogger Ron Coleman said...

Probably it is the surname of the founder of the business, long gone --note the retro style of the logo, which in fact appears "authentically" retro, as does, based on my own little experience with such a mark, that awful misuse of the apostrophe.

But because old man Weis is probably no longer in the picture, the applicant presumably felt that "Weis" was the business, not the person.

At 4:58 PM, Anonymous Orrin A. Falby said...

I guess these products are not yet available in the US? Based on a quick Internet search, the term appears to have secondary meaning in Australia, so I could understand how the Applicant feels about this mark. Even though it would have been a losing argument, I probably would have tried for 2(f) in the proceeding below and at least get that evidence into the record. The Weis bar even has its own entry in Wikipedia. Those arguments in the brief though - -WHEW!!! I can't be that creative. I know some clients can be difficult, but I would have tried to counsel them for the long term and not waste their money on this appeal. This counseling would have come from my supervising attorney of course, since I am a paralegal.


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