Berlitz filed a Israel trademark No. 232819 for “Total Immersion”. The mark, filed in class 41, is for teaching and practicing language, renting and hiring materials for teaching and practicing language, texts, publications, information, and consulting regarding language skills.
On 26 April 2011, an Examiner rejected the mark as lacking distinctiveness, since the term is widely used for language courses. Applicant responded by noting that the mark had been accepted by the Office Harnonization of the Internal Market (OHIM no 000198820) and requested registration under Section 16 based on the OHIM mark.
Maintaining that the mark was totally descriptive and wholly lacking in distinctive features, the Examiner continued to refuse the mark.
Applicant argued that ‘total language immersion’ may be in common use, but total immersion was a phrase coined by applicant and associated with applicant. This position was supported with statements from the Paul Weinstein, president, legal advisor and secretary of Berlitz to the effect that ‘Berlitz Total Immersion’ was a style of language teaching developed by the applicant and that ‘Total Immersion’ was registered in various jurisdictions.
The Examiner remained unswayed, and the Applicant appealed to the Commissioner of Patents and Trademarks.
The Appeal was based on an allegation that the term had acquired distinctiveness in Israel and that customers associated the term with the applicant.
On the scale from made up marks to descriptive ones, the Commissioner considered the mark as between indicative and descriptive. The Examiner considered the mark descriptive and generic, and cited various language schools. The Applicant considered that those attempting to learn the language would not even know what the word immersion meant. In response to this, and quoting the American Apparel decision, the Commissioner argued that the Patent Office cannot generally relate to the level of English of potential customers in Israel, however in this case, clearly the potential customers lack English schools and would not understand the nature of the word immersion and certainly not Total Immersion.
Since the mark can, at best, be considered indicative and not descriptive to the potential customers, Commissioner ruled that it could be registered under Section 8a, and thus whether or not it could be registered under Section 16 was moot.
The phrase Total Immersion is being used here as a metaphor. Berlitz teaches language. It does not provide Mikva services. I suspect that those trying to learn English via Berlitz have very poor skills, but that may not be true of a company representative purchasing the services for other members of staff.
The question is whether Berlitz is the only user of the term in Israel, or whether other language skills use the term. That’s what the opposition period is for…