Correct? IMHO, no.

Regarding “XO” I’d have to review the material to see if it fits my theory. But even if it doesn’t I’m ok with it – I’m just trying to understand someone else’s approach, not promoting it as my own. I can’t guarantee continuing consistency.

Let see …

In Paragraph 11 of the American Apparel ruling the Asistant Commissioner seemingly accepted that the word “apparel” is not commonly known to Israelis, but in Paragraph 18 of the ruling he also emphasized the fact that most Israelis do indeed know English.

In Paragraph 19 he pooh poohed the uniqueness of the “American Apparel” combination (quoting a rather unlawyerly text from Kerly in the process), but he did not actually address the uniqueness of the word “apparel” as (un)commonly used in English. Also absent is any reference to capitalization. To be fair, I don’t know if these issues were brought up by American Apparel’s representatives.

So I would summarize the Adjudicator’s approach as follows:

1. Israelis know English.
2. Unfamiliar words in English are still English. If he can look it up, it’s still just another word.
3. The test is from the perspective of a common Israeli, given rules 1 and 2.

Accordingly, the American Apparel ruling seems to be consistent with Virgin Candles. As per my previous post, I theorized that the reasoning behind Virgin Candles was “while the average Israeli can be expected to recognize the word ‘virgin’, he/she may not instinctively perform the mental gymnastics required to differentiate between Virgin Enterprises and Virgin Candles.”

Rewritten for American Apparel, it becomes “while the average Israeli is capable of looking up the word “apparel” in a dictionary (and therefore it is descriptive and not distinctive), he/she may not be expected to understand that “apparel” is not in common usage, nor to appreciate the significance of capitalization. Accordingly an Israeli would not instinctively perform the mental gymnastics required to differentiate between American Apparel and American clothing.”

In general, it appears that Israelis are assumed to view English trademarks in much the same manner that Yitschak viewed his sons. Yitschak was fully confident that he knew and understood his sons, yet despite the extreme physical and spiritual differences between Eisav and Ya’akov he had trouble differentiating between them, and failed miserably on the “sight (feel) and sound” test. A son is pretty much a son, and English is just English.

Apparently we English speaking patent attorneys take after Rivka’s side of the family.

Despite apparel being a well known word for us over-educated, native english speaking patent attorneys, most Israelis are less familiar, but the adjudicator ruled that the brand name was generic.

Whereas “Savta” is a Hebrew word that the Israeli populace is expected to know and intuitively understand its various nuances – as detailed in ruling, “virgin” is English – which puts it in a different category of understanding. English is a language which Israelis can almost universally read, but many do not understand it nearly as well as they think they do. Accordingly, while the average Israeli can be expected to recognize the word “virgin”, he/she may not instinctively perform the mental gymnastics required to differentiate between Virgin Enterprises and Virgin Candles … or so goes the theory, at least.

Please note that I’m not necessarily advocating this distinction, so much as I’m offering it as a possible explanation of the Assistant Commisioner’s reasoning. I have read several of his rulings over the past few years and I’ve noticed as an English speaker (if you’ll permit an American to label himself as such) that he tends to find a higher degree of similarity between requested/registered English language trademarks than I would.

It does of course make sense to expect the average Israeli to be more capable of distinguishing between Hebrew words than making the same distinction between English words. The question to be answered is how much more?