TTABlog Test: Is "CARUSO HOTELS AND RESORTS" Primarily Merely a Surname?

The USPTO refused registration of the mark CARUSO HOTELS AND RESORTS for "hotel and resort services" [HOTELS AND RESORTS disclaimed], finding the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that fewer than one-hundredth of one percent of Americans have the surname CARUSO, that "caruso" means "boy" in Italian/Sicilian, and that CARUSO identifies the Italian operatic tenor, Enrico Caruso. How do you think this came out? In re Caruso Property Management, Inc., Serial No. 86068166 (July 6, 2016) [not precedential].

Examining Attorney Cheryl Clayton submitted a search report showing that CARUSO ranks as the 1,621st "most popular last name" in the USA, and that 23,919 persons share that surname. She also provided a page from a surname dictionary identifying CARUSO is an American surname of Italian origin, and a Wikipedia entry stating that one of the meanings of "Caruso" is that of a surname.

Applicant admitted that "Caruso" is a surname, but argued that it is a relatively rare one.

The Board noted that even the most common surname would represent only a small fraction of the entire US population. Furthermore, even rare surnames may be unregistrable, and there is no minimum number of directory listing required to establish a prima facie case under Section 2(e)(4). [In terms of prior Board decisions, 23,919 is a lot - ed.]. The Board also noted that "Caruso" is the name of one of Applicant's founders, as well as the most important part of Applicant's trade name and of the applied-for mark.

The Dictionary of American Names states that CARUSO is an Italian word for a:

nickname from caruso ‘close-cropped’...” and “[t]his word was also used in the more general sense ‘boy’, ‘lad’, since in the Middle Ages young men of fashion sometimes wore their hair much shorter than was the prevailing style. In the Girgenti area of Sicily the term was a metonymic occupational name for a worker in the sulfur pits, since such workers were required to wear their hair short.”

"When, as here, the term has a meaning in a foreign language, we consider the meaning's significance in the United States." [At least when it's a common, modern language - ed].

Few people would know that the surname CARUSO derives from an Italian/Sicilian historical noun. Such an obscure meaning does not detract from the surname significance of the term.

When CARUSO is used for the name of a hotel, it would be much more likely to be perceived as a surname, perhaps the owner’s, than as conveying that a “dear boy” operates or provides the name for the hotel.

Finally, the Board observed that the fact that an individual is famous in a particular field generally will not dissipate the term's primary surname significance. "There is a difference between an individual that has made a historically significant contribution and being an individual that has achieved such renown as an historical figure." The evidence did not support the assertion that the primary significance of CARUSO for hotel and resort services is Enrico Caruso.

Considering the mark as a whole, and noting the disclaimer of HOTELS AND RESORTS, the Board found the mark to be primarily merely a surname, and it affirmed the refusal to register.

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TTABlog comment: How did you do?

In Thermo LabSystems [TTABlogged here], the TTAB found WATSON to be primarily a surname for laboratory management software. James Dewey Watson was one of the discoverers of the structure of the DNA molecule, but the Board was not persuaded that the relevant purchasing public would consider Dr. Watson to be such "an historical figure" that they would "view the primary connotation of WATSON as James Dewey Watson."

Compare Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (SDNY 1970) (finding DA VINCI not primarily merely a surname because it primarily connotes Leonardo Da Vinci).

Text Copyright John L. Welch 2016.