Friday, June 16, 2017

Precedential No. 16: Rejecting Equivalents Argument, TTAB Affirms Surname Refusal of WEISS WATCH COMPANY

The Board affirmed a Section 2(e)(4) refusal of WEISS WATCH COMPANY for watches, clocks, and related goods [WATCH COMPANY disclaimed], finding the applied-for mark to be primarily merely a surname. Applicant argued that, applying the doctrine of foreign equivalents, WEISS has non-surname significance because “weiss” means “white” in German, and thus the surname bar is inapplicable. Nein, said the Board. In re Weiss Watch Company, Inc., 123 USPQ2d 1200 (TTAB 2017) [precedential] (Opinion by Judge Kuhlke).

WEISS is the surname of applicant's founder and head watchmaker, Cameron Weiss. The surname WEISS ranks number 531 on the list of common surnames in America for the year 2000. A LEXIS/NEXIS search revealed 99,683 appearances of the surname WEISS in a nationwide telephone directory. In short, the evidence showed that "WEISS is not rarely encountered as a surname in the United States."

There was no evidence that WEISS has a recognized meaning in English other than as a surname, but applicant pointed to the meaning of WEISS in German as "white," relying on In re Isabella Fiore LLC, where a surname refusal of FIORE was reversed because it is the Italian equivalent of "flower." [TTABlogged here]. This other meaning, applicant argued, removes WEISS from the surname bar.

The doctrine of foreign equivalents applies when it is likely that the ordinary American purchaser would "stop and translate" the foreign word into its English equivalent. The "ordinary American purchaser" includes "all American purchasers, including those proficient in a non-English language, who would ordinarily be expected to translate words into English."

The Board has found that consumers would stop and translate a term when it is from a major, modern language, spelled in the standard way in the foreign language, and is the only translation of the English word to which it translates, so that there is no question that its translated meaning would be recognized and not considered obscure. Isabella Fiore, 75 USPQ2d at 1569.

The Board recognized that German is a major, modern language and the proposed other meaning ("white") is not obscure, but "WEISS is not the standard orthography for the word 'white' in German." "White" translated from English into German is spelled as "Weiß," with the letter eszett, not as "Weiss."The evidence did not show that "weiss," spelled without the eszett, translates into "white" in English. The Board concluded that application of the doctrine of equivalents is not appropriate here.

Moreover, the Board took judicial notice that WEISS derives from a German habitational name - i.e., a German surname based on a location. This fact reinforces the consumer perception of WEISS as a surname.

In Isabella Fiore, the term FIORE was spelled in the standard Italian form and the English equivalent of "flower" resolved only to "fiore." There was no question that the term "fiore" would be recognized as the Italian word for "flower." Nor was the meaning obscure, and so the Board concluded that consumers would stop and translate the term, a fact that detracted from its surname significance.

Here, however, WEISS is not spelled in the standard German dictionary form. Moreover, WEISS is more common as a surname than FIORE (5193 NEXIS entries) and there was no evidence that FIORE was a surname associated with applicant, whereas here WEISS is advertised to consumers as the name of applicant's founder and head watchmaker. Finally, the surname WEISS originated as a habitational name in Germany and therefore a German speaker is likely to view WEISS as a surname rather than translate it into another word.

The addition of the words WATCH COMPANY to WEISS does not affect the surname significance of the mark, viewed in its entirety, in the context of applicant's goods, since neither "watch" nor "company" has any source-identifying significance.

Therefore, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Even if German speakers would stop and translate WEISS into WHITE, the remaining 99% of Americans - who don't speak German - would not. So why does it make a difference in the surname analysis whether such a small portion of Americans might not perceive WEISS as primarily a surname, when 99 % of Americans would?

"What watch? Ten watch. Such watch!"

Text Copyright John L. Welch 2017.


At 10:57 AM, Anonymous Anonymous said...

"ß" is not the letter "B" in German -- it is a double "s."

At 11:06 AM, Anonymous Anonymous said...

I don't understand the Board's analysis at all. I studied German in school, and I know that "ß" is a double s in German (not a B). To confirm my memory (as I studied German many years ago), I plugged "Weiss" into Google translate, and the English translation given from the German is "white." I don't think any German speaker or student would not immediately recognize "Weiss" as being both a surname and a color...

At 11:27 AM, Blogger Robert said...

The Board's analysis of the doctrine of foreign equivalents is just wrong and illustrates the dangers of relying on judicial notice. It grossly oversimplifies its analysis of German orthography and appears to create an unjustifiably sharp distinction in significance between WEISS spelled with an eszett and WEISS spelled with double esses.

First, a person may always use "ss" instead of eszett in Swiss Standard German. In fact, eszett is rarely used in modern Swiss German. So WEISS spelled with "ss" is the correct spelling for the word that we translate as "white."

Second, if an eszett is not available, "ss" is an acceptable substitute in most cases. For example if you type "weiss" in an online German-English dictionary, it will translate the term as "white."

Third, while most online German-English dictionaries include words from Swiss German, that does not mean they use Swiss German orthography to spell the words. So Langenscheidt and Google Translate will render "weiss" in standard German orthography using the eszett rather than standard Swiss German orthography.

As a German surname, WEISS can refer to "white" in addition to being a habitational name. Even as a surname, it would be spelled with an eszett.

In other words, a person familiar with German will recognize WEISS as signifying "white," "to know," or a surname depending on context. It nothing to do with whether the word is spelled with an eszett or double ess.

At 11:58 AM, Anonymous Anonymous said...

"White" is a common surname, too, think Betty White. What would the board do with the White Watch Company as a mark?

Seems like another instance of relishing the power to say "NO"

At 4:55 PM, Blogger John L. Welch said...

WHITE has a non-surname meaning, and so it is not "primarily merely a surname" as required for the Section 2(e)(4) ban.


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