International Tractors Ltd.

Trademark Trial and Appeal Board

Mar 30, 2018

No. 86838500 (T.T.A.B. Mar. 30, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: March 30, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re International Tractors Ltd.
_____

Serial No. 86838500
_____

John S. Egbert of Egbert Law Offices PLLC,
for International Tractors, Ltd.
Daniel P. Donegan,1 Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_____

Before Kuhlke, Taylor and Masiello,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
International Tractors Ltd. (“Applicant”) seeks registration on the Principal
Register of the mark SOLIS (in standard characters) for, as amended,
Agricultural machines, namely, rotovator tillers,
threshers, shellers, huskers, cultivators, disk harrows,
seeders, ploughs, reapers, combine harvesters; agricultural
instruments, namely, cutters in the nature of silage
cutters, tree stump cutters, trench cutters; agricultural
implements, namely, seed drills; hand tools, namely,
electric drills; electric motors, namely, electric motors, not

1 Donald Johnson was the Trademark Examining Attorney responsible for the application
prior to briefing.
Serial No. 86838500
- 2 -
for land vehicles, electric motors for machines; pumping
machines, namely, compressed air pumps, fuel pumps for
land vehicles; diesel oil engines for machines; engine pump
sets, namely, pumps for cooling engine, pumps as part of
machines, motors and engines, oil pumps for use in motors
and engines in International Class 7; and
Tractors and parts thereof in International Class 12.2
By way of background, the Trademark Examining Attorney (“Examining
Attorney”), in his first Office Action, initially refused Applicant’s mark on the grounds
of likelihood of confusion with the mark in Registration No. 3878243 under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and that Applicant’s mark is primarily
merely a surname under Section 2(e)(4) of the Act, 15 U.S.C. § 1052(e)(4). The
Examining Attorney also required Applicant to amend the identification of goods to
identify them with more specificity and either restrict the application to the number
of classes covered by fees already paid or to submit additional fees.

2 Application Serial No. 86838500 was filed on December 3, 2015, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). During prosecution of the application, Applicant filed
an amendment to allege use which was accepted on April 7, 2017. Applicant now alleges
November 16, 2016 as the date of first use anywhere and in commerce for both classes of
goods.
The application also includes, as more fully discussed, infra, a claim of prior ownership of
Supplemental Register Registration No. 3878243 for the mark SOLIS (in standard
characters) for “tractor towed agricultural implements, namely, broadcast seeders; tractor
towed agricultural implements, namely, corn huskers; tractor towed agricultural
implements, namely, disc harrows; tractor towed agricultural implements, namely, fertilizer
distributors; tractor towed agricultural implements, namely, harrows; tractor towed
agricultural implements, namely, harvesters; tractor towed agricultural implements,
namely, hay balers; tractor towed agricultural implements, namely, hay rakes; tractor towed
agricultural implements, namely, manure spreaders; tractor towed agricultural implements,
namely, mowers; tractor towed agricultural implements, namely, plows; tractor towed
agricultural implements, namely, reapers; tractor towed agricultural implements, namely,
rollers; tractor-towed fertilizer applicators; [and] tractor-towed harrows” in International
Class 7; and “tractors” in International Class 12.
Serial No. 86838500
- 3 -
In its September 22, 2016 Response, Applicant indicated that there is no likelihood
of confusion with Registration No. 3878243 because the registration had been
assigned to Applicant, amended the identification of goods to comply with both the
identification definiteness and fee requirements, and argued against the Section
2(e)(4) refusal.
In the October 19, 2017 Office Action, the Examining Attorney withdrew the
Section 2(d) refusal, indicated that the identification/fee requirements had been
satisfied, and made the Section 2(e)(4) refusal final.
Applicant appealed and requested reconsideration. After the Examining Attorney
denied the request for reconsideration, the appeal was resumed and both Applicant
and the Examining Attorney filed briefs. We affirm the refusal to register.
Section 2(e)(4) of the Trademark Act precludes registration of a mark on the
Principal Register which is “primarily merely a surname” without a showing of
acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f).3 A term is
primarily merely a surname if, when viewed in relation to the goods or services for
which registration is sought, its primary significance to the purchasing public is that
of a surname. Earnhardt v. Kerry Earnhardt, Inc., 846 F.3d 1374, 123 USPQ2d 1411,
1413 (Fed. Cir. 2017); In re Beds & Bars Ltd., 122 USPQ2d 1546, 1548 (TTAB 2017);
In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000). See also In re Hutchinson
Tech. Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988). This expression of

3 The application includes neither a claim of acquired distinctiveness under Section 2(f) nor
a request for registration on the Supplemental Register. Accordingly, those issues are not
before us in this appeal.
Serial No. 86838500
- 4 -
the test restates the rule set forth in In re Kahan & Weisz Jewelry Mfg. Corp., 508
F.2d 831, 184 USPQ 421, 422 (CCPA 1975) (“[A] correct resolution of the issue can be
made only after the primary significance of the mark to the purchasing public is
determined …”) and In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652,
653 (Fed. Cir. 1985). When we are faced with a Section 2(e)(4) refusal of a term in
standard character form, with no other literal or design elements, we consider the
impact the applied-for term has or would have on the purchasing public because “it
is that impact or impression which should be evaluated in determining whether or
not the primary significance of a word when applied to a product is a surname
significance. If it is, and it is only that, then it is primarily merely a surname.” In re
Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975) (quoting Ex
parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pat. 1955)) (emphasis in
original).
Whether the primary significance of an applied-for mark is merely that of a
surname is a question of fact. See Darty, 225 USPQ at 653-54. There is no rule as to
the kind or amount of evidence necessary to show that the applied-for mark would be
perceived as primarily merely a surname. This question must be resolved on a case-
by-case basis. Id. at 654. The entire record is examined to determine the primary
significance of a term. If there is any doubt, we “are inclined to resolve such doubts
in favor of applicant.” In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1334 (TTAB
1995).
Serial No. 86838500
- 5 -
In Darty, the Federal Circuit considered several factors in determining whether
the purchasing public would perceive a proposed mark as primarily merely a
surname, including: whether the applicant adopted a principal’s name and used it in
a way that revealed its surname significance; whether the term had a non-surname
“ordinary language” meaning; and the extent to which the term was used by others
as a surname. Darty, 225 USPQ at 653. The Board’s oft-cited “Benthin factors,” see
Benthin 37 USPQ2d at 1333-34, are also examples of inquiries that may lead to
evidence regarding the purchasing public’s perception of a term’s primary
significance.4 These “factors” are not exclusive and any of these circumstances –
singly or in combination – and any other relevant circumstances may shape the
analysis in a particular case.
The Examining Attorney and Applicant focused their arguments on the first four
Benthin factors. While we review each in turn, we make our determination by
weighing them together and according the appropriate weight to each one based on
the evidence of record.
(1) The Extent to Which Solis is Encountered as a Surname
We consider first the frequency of, and public exposure to, SOLIS as a surname.
In this regard, “[t]he relevant question is not simply how frequently a surname

4 In Benthin, the Board stated that “factors” to be considered in determining whether a term
is primarily merely a surname include (1) the degree of a surname’s rareness; (2) whether
anyone connected with applicant has that surname; (3) whether the term has any recognized
meaning other than that of a surname; (4) whether the term has the “structure and
pronunciation” of a surname; and (5) whether the stylization of lettering is distinctive enough
to create a separate commercial impression. Where, as here, the mark is in standard
characters, it is unnecessary to consider the fifth factor. In re Yeley, 85 USPQ2d 1150, 1151
(TTAB 2007).
Serial No. 86838500
- 6 -
appears, … but whether the purchasing public for Applicant’s [goods] is more likely
to perceive Applicant’s proposed mark as a surname rather than anything else.” Beds
& Bars, 122 USPQ2d at 1551. The Examining Attorney has introduced the following
evidence demonstrating surname use:5
• Search results from a search of the LexisNexis® Public Records: Surname
database for the term SOLIS, indicating the total number found as 110,991,
and with 500 listings made of record.6
• Results of a search of 411.com, a nationwide telephone directory, finding
75,605 exact matches for SOLIS.7
• An excerpt from the 2000 U.S. Census showing that SOLIS is the 497th most
common surname in the nation, with 60,045 people having SOLIS as their
surname.8

5 Most of the evidence made of record by the Examining Attorney with the first Office Action
was reintroduced with the Final Office Action. Where duplicated, we cite to the Final Office
Action issued October 19, 2016.
6 October 19, 2016 Office Action; TSDR 43. The TSDR citations are to the .pdf downloadable
format.
7 Id. at TSDR 6-35 (http://www.411.com/name/solis).
8 Id. at TSDR 36-37
(https://www.census.gov/topics/population/genealogy/data/2000_surnames.html#).
Serial No. 86838500
- 7 -
• Wikipedia entry9 for “SOLIS” indicating that “Solis is a Spanish name derived
from the Latin sol solis …, literally meaning sun.” The Wikipedia entry listed
the following people with the surname SOLIS:10
o Brian Solis, American marketing executive
o Gabrielle Solis, a fictional character on the ABC
drama Desperate Housewives (which aired for eight
seasons)
o Hilda Solis, current [now former] U.S. Secretary of
Labor, former Congresswoman for the 32nd District
of California
o Oscar A. Solis, Auxiliary bishop of the Roman
Catholic Archdiocese of Los Angeles
o Patti Solis Doyle, American political operative in the
2008 Clinton and Obama campaigns.
• Individual Wikipedia entries for the individuals listed above, except Hilda
Solis,11 as well as Sammy Solis, an American professional baseball pitcher
[formerly] for the Washington Nationals of Major League Baseball.12
• An excerpt from the United States Department of Labor/Hall of Secretaries
webpage featuring Hilda Solis.13

9 Notably, we do not accept the Wikipedia entries as factually accurate, but rather, merely
as evidence that the surname SOLIS has been acknowledge and discussed by members of the
public.
10 Id. at TSDR 38-39. We have not considered the listing with regard to persons having
alternative spellings or who, on the face of the descriptions, are not associated with the
United States – i.e., Virgil Solis, 16th century German draughtsman and printmaker in
engraving, etching and woodcut.
11 May 2, 2017 Denial of Request for Reconsideration; TSDR 12-35.
12 October 19, 2016 Office Action; TSDR 40-42.
13 May 2, 2017 Denial of Request for Reconsideration; TSDR 10-11.
Serial No. 86838500
- 8 -
• An article from dmagazine, featuring Miguel Solis’ decision not to run against
Pete Sessions.14
• A press release of Wabash College stating that Rodolfo Solis has been named
a 2017 American Political Science Association Ralph Bunch Summer Institute
Scholar.15 and
• A Tulane University online news report featuring Luis Guillermo Solis’
(Tulane alumnus and current Costa Rican President) receipt of the President’s
medal.16
We find this evidence demonstrates that SOLIS is used as a surname across the
country, and that it has received a good deal of exposure, as demonstrated by
discussion of numerous individuals named SOLIS on Wikipedia and in the press. In
addition the U.S. Census bureau data, showing 60,054 occurrences of the surname
SOLIS, and indicating that it is the 497th most common surname in the United
States, along with the telephone directory search results which returned 75,605
names, establishes that the surname SOLIS is not rarely encountered in the United
States. Indeed, Applicant does not assert otherwise and, in fact, does not address this
factor.
(2) Whether SOLIS is the Surname of Anyone Connected with Applicant

14 Id. at TSDR 36-40.
15 Id. at TSDR 41.
16 Id. at TSDR 42-46.
Serial No. 86838500
- 9 -
We now consider whether anyone with a publicly known connection with
Applicant has the surname “Solis.” Although conceding that “the term ‘SOLIS’ can be
used as a surname of Spanish origin,”17 Applicant affirmatively states, and there is
no record evidence to the contrary, that “no person connected with the Applicant’s
business has the surname ‘SOLIS.’” However, the fact that no one named SOLIS is
associated with Applicant is not controlling. See In re Gregory, 70 USPQ2d 1792, 1995
(TTAB 2004) (The Board stated that the fact that “a proposed mark is not the
applicant’s surname, or the surname of an officer or employee, does not tend to
establish one way or the other whether the proposed mark would be perceived as a
surname.”). Thus, this is a neutral factor in our determination.
(3) Whether SOLIS has any Recognized Meaning Other Than as a Surname
The Examining Attorney has demonstrated that SOLIS has no recognized
meaning in English other than as a surname by showing that searches for SOLIS in
the online dictionaries Lookwayup.com, Merriam-Webster.com and Rhymezone.com,
collectively, returned no results of a non-surname meaning.18 This “negative”

17 Applicant goes on to point out that it is extremely unlikely that its applied-for mark SOLIS
was derived from a surname of Spanish origin because Applicant is a limited company (Ltd.)
of India. While that may be so, that is not the relevant inquiry. The ultimate inquiry is
whether the public perceives the primary significance of SOLIS as a surname, with one of
the factors in the inquiry being whether someone associated with Applicant bears SOLIS as
a surname. In any event, it is not inconceivable that an Indian entity could have an officer
with a Spanish surname.
18 October 19, 2016 Office Action; TSDR 49-51. The definitions did, however, corroborate the
surname meaning of the term. For example, the evidence from Lookwayup.com defines
SOLIS as a “[l]ast name, frequency rate in the U.S. is 726.” Similarly, SOLIS is defined by
Rhymezone.com as “[a] surname (common: 1 in 6250 families; popularity in the U.S. is # 726).
The definition from Merriam-Webster, however, indicated that SOLIS is a “biographical
name” and lists “Hilda (Lucia) 1957- United States secy. of labor (2009-13).”
Serial No. 86838500
- 10 -
dictionary evidence (i.e., listings showing nothing except surname/biographical
meanings) supports a finding that the primary significance of SOLIS is as a surname.
See, e.g., In re Eximius Coffee LLC, 120 USPQ2d 1276, 1280 (TTAB 2016) (citing In
re Isabella Fiore LLC, 75 USPQ2d 1564, 1566 (TTAB 2005). See also Darty, 225 USPQ
at 653-654.
Applicant has countered this position, arguing that its mark has a meaning in
Latin that the purchasing public would perceive when encountering its mark that is
unrelated to any alleged surname significance. Applicant particularly explains that
“[t]he term ‘SOLIS’ is a rather widely known Latin word with a well understood
meaning. [Internal citation omitted.] In Latin, the term ‘SOLIS’ can mean ‘sun’ or
‘sunlight,’ depending on whether the term was used with other Latin words.” Br. p.
6.19
By this argument, Applicant has invoked the doctrine of foreign equivalents. We
accordingly consider whether the doctrine is applicable and, if so, whether the
meaning of SOLIS in Latin is the primary significance of SOLIS. See Isabella Fiore,
756 USPQ2d at 1567-68 (The Board found FIORE, which means “flower” in Italian,
not primarily merely a surname.).
Whether the doctrine of foreign equivalents applies turns upon the significance of
the foreign mark to the relevant purchasers, which is based on an analysis of the
evidence of record. The doctrine may be applied to words or terms from common,
modern languages. Palm Bay Import, Inc. v. Veuve Clicquot Ponsardin Maison

19 Applicant’s Brief, p. 6; 11 TTABVUE 7.
Serial No. 86838500
- 11 -
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Although
words from modern languages are generally translated into English, the doctrine of
foreign equivalents has evolved into a guideline, not an absolute rule, and is applied
only when it is likely that “the ordinary American purchaser would ‘stop and
translate’ [the term] into its English equivalent.” Id., (quoting In re Pan Tex Hotel
Corp., 190 USPQ 109, 110 (TTAB 1976)). See generally TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) § 1209.03(g) (Oct. 2017). However, “[w]hen it is
unlikely that an American buyer will translate the foreign mark and will take it as it
is, then the doctrine of foreign equivalents will not be applied.” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1696, (citing
In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975) (no likelihood of confusion between
TIA MARIA for a Mexican restaurant and AUNT MARY’S for canned vegetables)).
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.” In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d
1489, 1492 (Fed. Cir. 2009).
The Examining Attorney takes the position that the doctrine of foreign
equivalents is not applicable in this case because “Latin is considered a dead language
which consumers would not be expected to stop and translate.” To confirm this status,
the Examining Attorney in his brief has requested, and we have taken, judicial notice
of dictionary definitions from Ahdictionary.com and En.oxforddictionaries.com.20

20 The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110
Serial No. 86838500
- 12 -
Ahdictionary.com defines “dead language” to mean, “[a] language, such as Latin, that
is no longer learned as a native language by a speech community,”21 while
En.oxforddictionary.com defines it as “A language which is no longer in everyday
spoken use, such as Latin.”22 This evidence not only demonstrates that Latin is
routinely considered a “dead language” that is no longer in everyday use, but that it
is also no longer learned as a native language by speech communities. In fact,
Applicant conceded that Latin is not routinely spoken in the United States.23
Nonetheless, on this point, Section 1207.01(b)(vi)(B) of the TMEP is further
illuminative:
If [as in this case] evidence shows that the language at
issue is highly obscure or a dead language, the doctrine will
generally not be applied. See Palm Bay Imps., 396 F.3d at
1377, 73 USPQ2d 1689, 1696; cf. In re Spirits Int’l, N.V.,
563 F.3d 1347, 1351, 90 USPQ2d 1489, 1491 (Fed. Cir.
2009) (indicating that the doctrine of foreign equivalents
does not require that terms from dead or obscure languages
be literally translated for the purpose of determining
descriptiveness). The determination of whether a language
is “dead” is made on a case-by-case basis, based upon the
meaning the word or term would have to the relevant
purchasing public. For example, Latin is generally
considered a dead language. However, if evidence shows
that a 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.

USPQ2d 1227, 1229 n.4 (TTAB 2014); Threshold.TV Inc. v. Metronome Enters. Inc., 96
USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB
2006).
21 https://www.ahdictionary.com/work/search.html?q=dead%20language. 13 TTABVUE 14-
15.
22 https://en.oxforddictionaries.com/definition/us/dead_language. 14 TTABVUE 18.
23 Applicant’s Brief, p. 6; 11 TTABVUE 7.
Serial No. 86838500
- 13 -
Here, Applicant has provided no evidence regarding the number of persons having
knowledge of Latin in the United States or showing that the term “Solis” is a term
that is still in use by the purchasing public in the context of its Latin meaning.
Instead, Applicant relies on its unsupported argument that “[m]any students in high
school and college still study Latin and would certainly come across the word
“sunshine” or “sun” in their Latin studies.” Even if this is so, the fact that a dead
language is studied in an academic setting does not mean that the relevant
purchasing public would be likely to stop and translate SOLIS to its Latin equivalent
such that its Latin meaning would be its primary significance.
Applicant also postulates that although Latin is not routinely spoken by members
of the U.S. population, the impact of Latin on modern culture is undeniable, as Latin
serves as the foundation upon which numerous modern languages are built, and
many modern languages contain the root of the Latin word “solis” in their word for
sun. Again, while this may be so, it is unlikely that the ordinary American purchaser
is familiar with the etymology of the term SOLIS and, thus, it is unlikely that the
primary significance of SOLIS to that purchaser would be its meaning in Latin.
Notably, the fact that Applicant, on its website, apparently finds it necessary to
educate the public to the non-surname meaning of “solis” bolsters our finding that
the public would not be aware of any non-surname meaning upon initially
encountering Applicant’s SOLIS mark.
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
Serial No. 86838500
- 14 -
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.
(4) Whether SOLIS has the Structure and Pronunciation of a Surname
We recognize, first, that the assessment of whether SOLIS has the structure and
pronunciation of a surname is a “decidedly subjective” inquiry. Eximius Coffee, 120
USPQ2d at 1280 (quoting Benthin, 37 USPQ2d at 1333). As the Board noted in In re
Olin Corporation, 124 USPQ 1327, 1332 (TTAB 2017), “applicants and examining
attorneys may submit evidence that, due to a term’s structure or pronunciation, the
public would or would not perceive it to have surname significance.”
Here, the Examining Attorney maintains that SOLIS is similar in structure and
pronunciation to other frequently encountered surnames (as shown in the 2000
Census excerpt24): Davis (7th most popular), Harris (24th most popular), and Morris
(56th most popular). He particularly expounds that each of these surnames, along
with SOLIS, are disyllabic, with an ending consisting of “-is.” We find this evidence
unpersuasive to show that SOLIS has the structure and pronunciation of a surname.
Applicant contends that “SOLIS” does not have the visual appearance or spoken
sound of a surname because it does not follow the pattern of any common type of
surname, e.g., -son, -ter.

24 October 19, 2016 Office Action; TSDR 36-37.
Serial No. 86838500
- 15 -
The evidence is not clear on this point either way, and does not factor into the
determination. Eximius Coffee, 120 USPQ2d at 1280.
(5) Other Arguments
Applicant also contends that the commercial impression it sought to associate
with its mark is clearly related to the sun, the yellow sunbeam appearing on its
specimen suggesting a ray of sunshine. The problem with Applicant’s argument is
that, regardless of what it intends the connotation of its mark to be, there is no
evidence that purchasers would actually perceive it as having that connotation – the
yellow sunbeam not being a part of its mark. Cf. In re Infinity Broadcasting Corp. of
Dallas, 60 USPQ2d 1214 (TTAB 2001) (commercial impression of a mark is
determined independent of the context of actual usage).
As for the Examining Attorney, he argues that an additional consideration for
treating the term SOLIS as primarily merely a surname is Applicant’s prior
Registration No. 3878243 for SOLIS on the Supplemental Register, which serves as
evidence of the weakness of the mark for essentially the same goods. Applicant
responded by explaining that:
[T]he trademark application [underlying Registration No.
3878243] was prosecuted by another Applicant, pro se, and
… the mark was amended to the Supplemental Register
October 12, 2010. The pro se Applicant did not enter any
arguments against the surname refusal. The trademark
registration was then assigned to Applicant on May 19,
2016 [to overcome a Section 2(d) refusal]. Any statements
made within the prosecution of the prior registration are
not binding on Applicant’s trademark application at issue
in this ex parte appeal, which is a wholly separate and
distinct application as compared to the prior registration.
14 TTABVUE 5.
Serial No. 86838500
- 16 -
We agree. Our primary reviewing court addressed a very similar issue in In re
Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010). In
Chippendales, one of the issues on appeal was “whether the granting of a Section 2(f)
registration for a mark of acquired distinctiveness moots the request for an inherent
distinctiveness registration.” Id. at 1685. The court held that inherent distinctiveness
is decided at the time of registration. It thus follows that even if a mark was
previously registered pursuant to Section 2(f) of the Trademark Act as having
acquired distinctiveness, or on the Supplemental Register as lacking inherent
distinctiveness or secondary meaning, an applicant is not foreclosed from filing a later
application seeking an inherently distinctive registration of the same mark.
(6) Conclusion
In conclusion, we find that the record, taken as a whole, establishes that the
primary significance of SOLIS to the purchasing public is that of a surname. In
making this finding, we accord particular weight to our determination that SOLIS is
a common surname with no other meaning that would be recognized by ordinary
American purchasers because application of the doctrine of foreign equivalents is not
appropriate in this case as it is unlikely that consumers would stop and translate
SOLIS. While Applicant is correct that doubt about whether a term is a surname is
resolved in the applicant’s favor, here we have no doubt.
Decision: The refusal to register SOLIS under Section 2(e)(4) is affirmed.