Thursday, July 05, 2012

Test Your TTAB Judge-Ability: Is "CARDANO" Primarily Merely a Surname?

The PTO refused registration of CARDANO for various financial services, deeming the mark to be primarily a surname under Section 2(e)(4). The evidence showed that some 100 individuals in this country have the surname CARDANO. Applicant argued that the primary significance” of CARDANO is its association with Gerolamo Cardano, a Renaissance mathematician and physician, since the recited services are "“intricately tied with mathematics." How do you think this came out? In re Cardano Risk Management B.V., Serial No. 85230910 (June 7, 2012) [not precedential].

The Board followed Judge Seeherman's reasoning in her influential concurring opinion in In re Joint-Stock Company 'Baik', 84 USPQ2d 1921 at 1924 (TTAB 2007) [TTABlogged here], giving significant weight to the "extreme rareness" of the surname CARDANO. Judge Seeherman observed that 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....

Moreover, under the more traditional approach, the rareness of the surname makes it less likely that consumers will recognize it as a surname.

The Board noted that there were not any individuals with the surname CARDANO associated with Applicant. And there was no recognized non-surname meaning for CARDANO.

As to Applicant's reference to the Renaissance mathematician, the record failed to show that "Gerolamo Cardano is considered a well-known historical figure such that the proposed mark will be associated with the mathematician."

Finally, the PTO did not offer any evidence to show that CARDANO has the "look and sound" of a surname.

The Board ruled that, in light of the rareness of the surname, the likelihood that any individual with the surname CARDANO would seek to use that surname in a trademark for similar services or goods is greatly reduced. That factor outweighed the others, and so the Board reversed the refusal to register.

TTABlog comment: If "rareness" is the key factor under Section 2(e)(4), where does one draw the line between the marks barred by Section 2(e)(4) and those not barred? The Board is not likely to set some bright-line numerical boundary. For some further thoughts on the surname issue, see Section V of this article that I wrote a few years ago.

Text Copyright John L. Welch 2012


At 7:47 AM, Anonymous freiburger said...

This case well illustrates the flawed approach to surname refusals taken by examining attorneys. If the mark doesn't have a dictionary definition and the examining attorney can find 100 people in the United States with that surname, then the mark is automatically "primarily merely a surname." Rarity of the mark in use as a surname, or even extreme rarity, is dismissed with a form paragraph stating "there is no minimum number of telephone directory listings needed to prove that a mark is primarily merely a surname." It is as if examining attorneys cannot conceive that consumers may simply view the mark as a coined term.

Sure, sure, examining attorneys pay lip service to the notion that each case is decided on its own unique set of facts, but as a practical matter that's how many examining attorneys make the decision to issue a surname refusal.


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