Thursday, December 03, 2020

Precedential No. 41: TTAB Affirms Bifusal of TAPIO for Software: Section 2(e)(4) Surname and Indefinite Identification of Goods

The Board affirmed two refusals to register the proposed mark TAPIO for various Internet-related goods and services, finding applicant's identification of goods unacceptably indefinite in part, and deeming the term TAPIO to be primarily merely a surname under Section 2(e)(4). The Board refused to adopt applicant's proposed standard requiring "celebrity status," "national notoriety," or "significant media attention" in order to establish that a surname, although not common, has sufficient public exposure to be deemed primarily merely a surname under Section 2(e)(4). In re tapio GmbH, 2020 USPQ2d 11387 (TTAB 2020) [precedential] (Opinion by Judge Melanye K. Johnson).

Indefiniteness in Class 9: Despite three proposed amendments, Applicant was unable to come up with an identification for its class 9 software that satisfied the USPTO. Applicant's original identification of goods read as follows:

Computer application software for unifying, accessing, hosting, managing, maintaining, interacting with, communicating with and between, controlling and sharing cloud based Internet of Things devices and services; Downloadable cloud-based software for unifying, accessing, hosting, managing, maintaining, interacting with, communicating with and between, controlling and sharing cloud based Internet of Things devices and services.

The Board found the phrase “devices and services,” as it is used in the clause, “cloud based Internet of Things devices and services,” to be indefinite because the phrase is so broad that it could include goods or services in more than one class. Subsequent amendment suffered from the same lack of specificity and/or improperly expanded the scope of the goods.

And so the Board affirmed the refusal to register based on the requirement that Applicant provide a more definite identification of its goods in Class 9.

Surname Refusal: The Board applied the ever-popular Benthin factors, which provide "examples of inquiries that may lead to evidence regarding the purchasing public’s perception of a term’s primary significance."

Frequency and Exposure as a Surname: Examining Attorney Christopher Buongiorno submitted LexisNexis® evidence showing 200 search results out of 374 occurrences of the surname “Tapio,” database search results showing 71,018 summary “hits” for the surname “Tapio,” six news items referring to five people who appear to be in the United States (including a South Dakota state senator) with the Tapio surname, and a page from the Internet website of one forty-year-old construction business located in Vancouver, Washington using the founder’s name, “Tapio.” The Board found that this evidence established that the purchasing public is exposed to the surname TAPIO.


Applicant vigorously argued that TAPIO is “an extremely rare surname,” citing 2010 Census data showing that the surname “Tapio” ranked at 65,244 in terms of popularity, specifically showing 304 occurrences of the Tapio surname in America. The Board noted, however, that "given the massive number of surnames in the United States, even the most common surname would represent only a small fraction of the U.S. population. In re Gregory, 70 USPQ2d at 1795."

Applicant suggested that "significant media attention" is required when determining whether a rare surname has primary surname significance in the minds of the purchasing public, and it argued that none of the identified individuals has gained any media attention. Moreover, the news items did not appear in widely read publications. Thus, according to applicant, the evidence does not demonstrate widespread exposure to the surname "Tapio."

The Board, however, refused to adopt "a heightened standard requiring 'celebrity status,' 'national notoriety,' or 'significant media attention' in order to find that a surname, although not common, has sufficient public exposure to be primarily merely a surname within the meaning of Section 2(e)(4) of the Trademark Act."

Here, the record evidence shows the purchasing public is exposed to the TAPIO surname, and not just on a limited basis. The surname is noticeable in articles published in widely-circulated publications, namely, the New York Times, Sacramento Bee, and The Huffington Post; TAPIO is the surname of a South Dakota state senator who has received national media coverage in publications such as the New York Times and The Huffington Post; 71,018 summary “hits” for the surname “Tapio” appear in a database; and there is a Tapio Construction company in Vancouver, Washington, which, given the nature of the construction business, would be expected to be encountered by a number of Americans. That is, construction companies can be expected to interact with contractors, subcontractors, suppliers, governmental entities, real estate professionals, potential buyers or renters, and many others.

Moreover, the Board observed once again that “[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname.” In re Beds & Bars, 122 USPQ2d at 1551. The Board concluded that, although TAPIO is not a common surname, "there is meaningful and fairly widespread public exposure to the surname throughout the United States."

Other Benthin Factors: The applicant stated, without challenge, that no one with the surname TAPIO is associated with it. As to non-surname meanings, Applicant claimed that TAPIO is a coined term, “intended to suggest the functionality of Applicant’s software” by “suggest[ing] tapping on a smart phone or tablet, combined with the common computer-related abbreviation ‘I/O,’ for ‘input/output.’” The applicant also contended that the word TAPIO refers to an East Finnish forest spirit god. The Board, however, pointed out that there was no evidence that consumers would perceive TAPIO as a coined term, no evidence as to how frequently consumers are exposed to the term “TAP I/O,” and no evidence that TAPIO refers to a Finnish spirit god or that the relevant public would be aware of that meaning.

As to structure and sound, TAPIO is "nearly identical to the surname Tapia, which is also not an uncommon surname." The Oxford Reference Dictionary of American Family Names ranks “Tapia” at 3,902 out of over 70,000 surnames, and the surname Tapia is ranked 647th (occurring 17.9 times per 100,000 persons) according to 2010 U.S. Census records for the top 1,000 surnames. "This evidence leads us to conclude that Applicant’s mark, TAPIO, has the structure and pronunciation of a surname."

Conclusion; Balancing “the results of our inquiries . . . and using the evidence of record,” the Board found that TAPIO to be primarily merely as surname.

Read comments and post your comment here.

TTABlogger comment: I think the mark has the pronunciation and structure of tapioca.

Text Copyright John L. Welch 2020.


At 9:10 AM, Anonymous Simor Moskowitz said...

"Bifusal" -- a new "coined" term?

At 10:28 AM, Anonymous Anonymous said...

If you showed me the trademark and told me it was rejected under 2(e), I'm not sure I would even identify the surname issue. Personally speaking, "Tapio" does not strike me as primarily a surname.

At 10:28 AM, Anonymous Anonymous said...

It's hard for me to square this surname refusal with the Merriweather case just discussed a few posts before. Here, there are less people with the surname "Tapio" than there were with "Merriweather," and there seemed to be more people of fame with the surname "Merriweather." It comes across as the Board trying to justify the refusal of "Merriweather" by stating it is "not common," when I believe it would have been totally justifiable in that case to recognize that "Merriweather" is a common surname but the addition of the word "THE" changes the commercial impression of the mark as whole from primarily merely a surname to something specific (i.e., combining "THE" with "WELCH" would make me think that the mark is referring to something specific instead of someone with the surname "Welch" since people are rarely referred to as "THE" and their surname). While in 2(d) and 2(e)(1) contexts, the word "THE" really doesn't change anything, I don't think that standard applies in a 2(e)(4).

At 12:23 PM, Anonymous Anonymous said...

TAPIO is not used primarily merely as a surname as per the suggestive nature of the app - and website -

Another "Living in Reality Distortion USPTO Trademark World" decision by the TTAB. So much for "promoting commerce."

And, I am a Robot reCaptcha. Stop asking me.

At 2:23 PM, Anonymous Anonymous said...


At 3:07 PM, Anonymous Anonymous said...

The Board's analysis of the ID is.. something. I don't understand how the wording "devices and services" would have any effect on classification since the "software" would be in either 9 if downloadable or 42 if online regardless of the devices they are controlling. What am I missing I am very confused?

At 2:54 PM, Anonymous Anonymous said...

"There is a Tapio Construction company in Vancouver, Washington, which, given the nature of the construction business, would be expected to be encountered by a number of Americans." Can this really be said with a straight face? Oh, and don't forget the South Dakota state senator with that last name . . . . I'm not persuaded.


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