TTABlog Test: Is "REMO" Primarily Merely a Surname for Telecommunication Services?
The USPTO refused to register the proposed mark REMO for telecommunication services and on-line networking services, deeming the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that "Remo" is a rare surname, and therefore "the consuming public would not recognize this term as a surname, and there is practically no risk to persons wanting to use the surname in business." [I've never encountered anyone named "Remo." Have you? - ed.]. How do you think this came out? In re Remo USA, Inc., Serial No. 90231210 (March 1, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).
The applicant got off on the wrong foot, evidentiary-wise. The Board gave no consideration to third-party registrations listed in applicant's brief because they were not made of record during prosecution. Moreover, merely listing or summarizing portions of registrations does not count anyway. Also, the hyperlinks to census records that were included in applicant's office action response are not evidence; the Board has made clear that providing hyperlinks is insufficient to make such materials of record.
Examining Attorney Alaina Arthur submitted LexisNexis search results showing more than 1600 entries for the surname "Remo," with 200 of those listings made of record. The listed individuals were located across the United States. [Would it make any difference if they were all in one state? -ed.]. Dictionary evidence showed no entries for the word "remo" and a genealogical website indicated that "remo" has no known meaning.
As to applicant's contention regarding "rareness," the Board observed that there is no set rule regarding the kind or amount of evidence need to show that a proposed mark would be perceived primarily as a surname.
The evidence of individuals in a number of locations throughout the United States who bear the REMO surname shows that it "is not so unusual that such significance would not be recognized by a substantial number of persons." Darty, 225 USPQ at 653. Moreover, "even a rare surname is unregistrable if its primary significance to purchasers is a surname." Id. at 1281.
And so, the Board affirmed the refusal.
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TTABlogger comment: These surname cases usually include evidence regarding individuals having the surname at issue: for example, a state senator or a former minor league baseball player. Here, nothing. Rather strange, IMHO.
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 3/03/2023
5 comments
5 Comments:
I've never heard of anyone named "Remo" either. A suggestion from South Louisiana: perhaps the applicant can re-brand as "Remeaux"!
But on a serious note, the identified services are rather sophisticated: "Telecommunication services, namely, providing multimedia teleconferencing, videoconferencing, and online meeting services, namely, web conferencing for communication and networking via audio, video and text, and for viewing, sharing, editing, and discussion of documents, data, and images by participants, over the Internet and Intranets In International Class 38." It's not an application for something more generalized such as "consulting" (in some broad field) or education/entertainment (about some broad topic(s)) or food/bev or clothing goods. What would be the chance of another entrant in Class 38 with the same rare last name? How often are registrations for telecom services cited outside of Class 38? Rare name + services with high entry barriers = registration should move forward??????????
Doesn't "primarily merely a surname" mean that when a consumer encounters "remo" that it is more likely than not to be as a surname? Just showing that 200 people have that name shouldn't be enough. The examiner should have to show that consumers are actually most likely to encounter the word as a surname.
1600 entries for REMO out of 332,278,200 people living in the US is .00000482! Remo is not statistically significant. TTAB needs to wake up! Are these decisions being written by AI? Almost seems like they lack any human thinking - just technical nonsense.
I have encountered (not necessarily personally) lots of people named Remo. In every case Remo was the person's FIRST NAME, never a surname. The founders of the city of Rome were Romolo and Remo (commonly Anglo-Latinized as Romulus and Remus). There is a Saint named Remo, for whom the fairly widely known town of San Remo is named. The geographically and historically abundant occurrence of REMO as a first name should have easily outweighed its alleged significance as "primarily merely a surname".
Bob is correct and I believe arguing that REMO is a common first name would have been a winning argument. It would have clearly shown that the term has a recognized meaning other than as a surname. It does not appear this argument was made by the Applicant, however.
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