Friday, July 22, 2005

TTAB Affirms Surname Refusal of "PICCHIOTTI" for Jewelry

Well, here we go again with another Italian surname case, but this time the Board got it right. It affirmed a Section 2(e)(4) refusal to register the mark PICCHIOTTI for jewelry and related goods. In re Messrs. Picchiotti S.r.l., Serial No. 76476489 (June 24, 2005) [not citable].

Examining Attorney Hannah Fisher relied on database search results revealing 36 residential listings for the surname Picchiotti, as well as on 4 NEXIS excerpts mentioning people with that surname. Another NEXIS excerpt referred to Giuseppe Picchiotti as owner of Applicant. She also submitted "negative" dictionary evidence in the form of pages from two dictionaries, neither of which included an entry for the word "picchiotti."

Applicant Messrs. Picchiotti S.r.l. contended that the PTO's evidence showed PICCHIOTTI to be a rare surname, "and thus it would not be perceived by the public as a surname." It argued that extensive use of the mark and, oddly, the fact that its mark is registered in many other countries proves that PICCHIOTTI has meaning other than as a surname. And, of course, it urged the PTO to resolve any doubt in its favor.

The Board applied once again the standard Section 2(e)(4) test of In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995), which requires consideration of four factors:

  1. the degree of a surname's rareness;
  2. whether anyone connected with applicant has that surname;
  3. whether the word has any recognized meaning other than that of a surname; and
  4. the structure and pronunciation or "look and sound" of the surname.

The Board agreed that, on this record, PICCHIOTTI must be considered a rare surname. As to the second factor, however, Applicant conceded that "someone connected with applicant has the subject term as a surname." In addition, the appearance of the word PICCHIOTTI in Applicant's company name "makes apparent its surname significance." That factor obviously weighed against Applicant.

musician Mark Picchiotti

Applicant's contention that the term has another meaning because of extensive sales under the mark and because of foreign registrations cut no ice with the Board: Applicant did not seek registration under Section 2(f), and so the extent of use of the term is irrelevant; ownership of foreign registrations is likewise irrelevant to registration of a surname in the United States.

Finally, as to "look and sound," the Board recognized that "this factor is subjective in nature." Without further explanation, it concluded that PICCHIOTTI looks and sounds like a surname.

The Board therefore ruled that the PTO established a prima facie case that PICCHIOTTI is primarily merely a surname, and that Applicant failed to present sufficient evidence to rebut the PTO's case.

TTABlog TTABad pun: A picchiotti of cake for the Board?

Text Copyright 2005 John L. Welch. All Rights Reserved.


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