Extreme Rareness of "RENATI" as Surname Leads to 2(e)(4) Reversal

Acknowledging that the Board's treatment of surname refusals has been "inconsistent with regard to the number of surname listings," the Board found RENATI to be an "extremely rare surname" and it reversed a Section 2(e)(4) refusal to register the mark for goods and services in classes 3, 25, 43, and 44, In re The House of Terrance Proprietary Limited, Serial No. 79048704 (January 6, 2010) [not precedential].


The Examining Attorney provided evidence of only seven individuals with the surname RENATI. Applying the relevant Benthin factors, the Board observed that "it is important to weigh the 'rareness' of the surname factor while keeping in mind the purpose of Section 2(e)(4) of the Act."

As explained by Judge Seeherman in her concurrence in In re Joint-Stock Company “Baik”, 84 USPQ2d 1921, 1924 (TTAB 2007), the "purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames,... Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses..."

Based on the record evidence the Board found that "RENATI is an extremely rare surname."

Turning to the other Section 2(e)(4) factors, the Board noted that Applicant uses "Renati" as a "surname substitute" on its website, and thus this factor weighs against Applicant.

The Examining Attorney provided negative dictionary evidence showing that "Renati" has no other meaning, but Applicant provided evidence that "Renati" is a given name. In fact, the record included more examples of "Renati" as a given name than as a surname, and so the Board found that the term does have significance other than as a surname.

As to "look and feel," because "Renati" is an extremely rare surname and is also a given name, "the examining attorney has not met her burden of demonstrating that 'Renati' has the look and feel of a surname".

Balancing these factors, and giving the first factor "more weight" than the others "because the record shows only seven persons with the surname 'Renati," the Board reversed the refusal.

TTABlog note: For a discussion of Judge Seeherman's view of Section 2(e)(4), which view seems to be winning some converts on the Board, see Section IV of this article.

Text Copyright John L. Welch 2010.