Wednesday, March 24, 2010

Test Your TTAB Judge-Ability: Does "VALVERDE" Have the Look and Sound of a Surname?

In this appeal from a Section 2(e)(4) refusal to register the mark VALVERDE for "“mineral and aerated waters; non-alcoholic drinks, namely, soda pops, fruit juices and fruit drinks; syrups for making beverages," the Board applied its standard In re Benthin surname test. It turned out that the deciding factor was whether the mark has the look and sound of a surname. How would you decide? In re Spumador S.P.A., Serial No. 79056027 (March 11, 2010) [not precedential].

Jose Valverde

The Examining Attorney submitted evidence that Valverde has no meaning other than as a surname: it is not listed in certain Italian and Portuguese dictionaries, several persons named Valverde can be found on the Internet, and a Wikipedia entry identifies Valverde as a surname. He also found 1859 entries for the surname in a LexisNexis surname search.

Applicant submitted evidence that a Civil War battle was fought at Valverde, New Mexico, that the surname ranks 6141 in frequency of use, that there are geographic locations in Italy, Portugal, Spain, and the Dominican Republic called Valverde, and that the word means "green valley" in Italian, Portuguese, and Spanish.

The Board first concluded that Valverde is "not a rare surname." It then noted that no one associated with Applicant has that name (a neutral factor).

As to the meaning of the word, the Board "could not find the word 'Valverde' in an Italian, Spanish or Portuguese dictionary," but it did find the word in the Dictionary of American Family Names. There was no evidence of significant consumer recognition of the Civil War battle, nor any such evidence regarding the foreign geographic locations. And so the Board concluded that the evidence that Valverde "as a surname" outweighed the evidence that it was not.

The Board then turned to the fourth factor, whether the mark has the "look and sound" of a surname. Applicant argued that Valverde "looks and sounds like a foreign (or unusual) word rather than like a surname." The Board agreed.

In this regard, there is no evidence that "____verde" or "Val____" is a common or recognized structure for a surname (e.g., ___berg as in Steinberg, ___man as in Bergsman, ___lov as in Orlov, etc.). There is also no evidence that any individuals with the "Valverde" surname are notable to consumers in the United States.

And so the Board reversed the refusal.

TTABlog comments: Well, how did you do?

Note the use of the term "soda pops" in the identification of goods. How did this Italian applicant come to use that term? In Boston, some people would use the term "tonic." I grew up in Chicago, where we called it "pop." I would have expected to see the term "soft drink beverages," or something like that, in a trademark application.

Text Copyright John L. Welch 2010.


At 8:15 AM, Anonymous Franco Serafini said...

This is a 66A application and you will notice that an Italian patent firm first applied for the mark - no wonder that their English is less than perfect (I thought you had to be a US or Canadian attorney to represent an applicant before the USPTO, but that is for another day).

I speak fluent Italian and, for whatever it is worth, I do not associate Valverde with a surname. If you look hard enough, you can find surnames equal to a lot of trademarks, so where is the threshold?

At 9:13 AM, Blogger John L. Welch said...

The application was filed under 66(a), and that can be done through Madrid without the need for a US attorney. You will note that, as required, a US attorney responded to the office action. So there's nothing out of line here.

At 10:02 AM, Anonymous Anonymous said...

As the melting pot melds in more ethnicities and free-spirit folks make up their own names, anything can be a surname.

-Moon Zappa

At 11:41 AM, Anonymous KWW said...

Sounds like a salsa to me.

suggests a twisted interpretation of "of green" or something.

At 1:47 PM, Anonymous Anonymous said...

How about Alejandro Valverdo, Cyclist, winner of the Vuelta a Espana? Professional cyclist with the Caisse d'Espargne team?


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