Thursday, September 11, 2014

Although Rare, LEARDI Primarily Merely a Surname, Says TTAB

The Board affirmed a Section 2(e)(4) refusal to register the mark LEARDI (in the stylized form below) for business management services, finding the mark to be primarily merely a surname. Although LEARDI is a rare surname, applicant indicated that it is the surname of Paolo Roberto Leardi, whose consent is of record. And there was no evidence of record that LEARDI would be viewed as anything but a surname.  In re Markbens Administradora de Bens Eireli, Serial No. 85713043 (September 9, 2014) [not precedential].

Examining Attorney Leslie L. Richards submitted a listing from a nationwide telephone directory indicating that 62 individuals in this country have the surname LEARDI. Although finding that LEARDI is a rare surname, the Board pointed out that "even a rare surname is unregistrable if its primary significance to purchasers is a surname." [But if the name is that rare, does it have any significance to the typical purchaser? - ed.].

Applicant indicated that LEARDI identifies Paulo Roberto Leardi, whose consent is of record. "A term that is the surname of someone associated with the Applicant is evidence of the surname significance of the term LEARDI. [Note: Applicant is a Brazilian company. Is Paulo Roberto Leardi a US citizen or resident? If not, what is the significance of his surname? - ed.]

"Negative dictionary evidence" from the Internet showed no definitions for LEARDI, but did provide examples of LEARDI used as a surname. And the Board found that it has the look and sound of a surname because the only public use of the word is as a surname, and further because it "appears to be a cohesive term with no meaning other than as a surname."

Of course, the stylization of the mark was insufficiently distinctive to create a separate commercial impression. "The term, although in stylized letters, would still be perceived as a surname."

The Board therefore affirmed the refusal.

Read comments and post your comment here

TTABlog note:  This decision takes the opposite approach to that which Judge Seeherman espoused in In re "Baik" [TTABlogged here] and other cases, where she posited that the rareness of the surname is the most important factor. In her view:

"The purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames, as though there were something offensive in viewing a surname. 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 ...." ***

"If the surname is extremely rare, it is also extremely unlikely that someone other than the applicant will want to use the surname for the same or related goods or services as that of the applicant."

Text Copyright John L. Welch 2014.


At 9:30 AM, Anonymous Anonymous said...

I couldn't agree more with Judge Seeherman. The public policy behind this seems to have been completely lost.

And to make things even goofier, I don't believe that acquired distinctiveness is relevant to this issue, but it sure seems like it should be. There was that Motts appeal within the last year rejecting Motts' application in connection with applesauce or something. Are you seriously telling me that Motts - which has been using their famous "name" for at least half a century - should be denied a federal registration because of the grave concern of not letting Bill Motts start his own applesauce company and use his name?

They need to reel it back in on this one.

At 9:43 AM, Anonymous Joe Dreitler said...

While this case seems rather simple and rightly decided, the surname refusal has been an overly complex and inconsistent hash my entire career. If it's extremely rare (say "Dreitler") but primarily merely a surname, even if only 3 people have that name in the US, then it appears to be afoul of the surname refusal. That goes for Leardi or any other name that doesn't have a second meaning. We run into issues when the word has a common dictionary meaning, name of a place, and years ago when it was the name of a famous deceased person. And then there is the question of what other terms you need to "hook" onto the surname so it isn't 'primarily merely" a surname.


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