Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE RAIVICO
Serial No. 525,885
September 15, 1988
Lackenbach Siegel Marzullo Presta & Aronson, P.C. for Raivico
Susan Kadilak
Trademark Examining Attorney
Law Office 2
(Ron Williams, Managing Attorney)
Before Krugman, Hanak and Quinn
Members
Opinion by Hanak
Applicant has applied to register the mark DE TAVERNAY in block letters for wines. [FN1]
Registration was refused pursuant to Section 2(e)(3) of the Lanham Trademark Act on the grounds that the mark is primarily merely a surname. When the refusal was made final, applicant appealed to this Board. Applicant and the Examining Attorney filed briefs. Applicant did not request a hearing.
In the first Office action, the Examining Attorney did not object on the basis that the mark sought to be registered was primarily merely a surname. However, the Examining Attorney did request that applicant translate the mark into English. In response, applicant noted that the mark was a surname. The Examining Attorney then refused registration on the basis that the mark was primarily merely a surname.
The only evidence of record demonstrating that DE TAVERNAY (or TAVERNAY) is even a surname (much less primarily merely a surname) is applicant's statement and the specimens. The Examining Attorney has not provided any evidence showing that DE TAVERNAY or TAVERNAY actually serve as surnames. For example, the Examining Attorney has not made of record any listing from a telephone directory or any article referring to DE TAVERNAY or TAVERNAY as surnames.
In contrast, the applicant has made of record excerpts from the telephone directories of Baltimore, Baton Rouge, Dallas, Denver, Los Angeles, Manhattan, Minneapolis and Philadelphia showing that there is not a single listing in any of them of the surname DE TAVERNAY. Indeed, the applicant also made of record telephone directory listings from Paris, France and Montreal, Canada showing that there is not a single listing of DE TAVERNAY. Moreover, the applicant made of record results from a NEXIS search showing that there was not a single reference in any article to DE TAVERNAY as a surname. The only reference found in applicant's NEXIS search for DE TAVERNAY reveals that it is the name of a street in Switzerland. Finally, applicant made of record a gazetteer entry showing that TAVERNAY is the name of a village in France. From the foregoing, applicant argues that DE TAVERNAY has never actually served as a surname, and that it has meanings other than as a surname, namely, the name of a street in Switzerland, and, with respect to the TAVERNAY portion of the mark, the name of a village in France.
In response, the Examining Attorney has stated that while DE TAVERNAY may be a rare surname, it is nevertheless not entitled to registration. Our decisions In re Luis Caballero, S.A., 223 USPQ 356 (TTAB 1984) and In re E. Martinoni Co., 189 USPQ 589 (TTAB 1975) are cited. However, the facts in those cases were different from the facts in this case in two respects. First, in both cases there was evidence of record showing that the surnames in question were indeed actually being used, albeit on a limited basis. In contrast, there is no evidence whatsoever showing that DE TAVERNAY or TAVERNAY are actually being used as surnames. Indeed, given the fact that there is not even one single listing for DE TAVERNAY in the telephone directories of Manhattan, Los Angeles, New Orleans, Baton Rouge, Denver and six other major cities, it would appear that DE TAVERNAY is not being used as a surname.
*2 Second, in the two cases cited by the Examining Attorney, the applicants did not demonstrate that the surnames in question had any meanings other than as surnames. In contrast, the applicant herein has shown that DE TAVERNAY is the name of a street in Switzerland, and that TAVERNAY is the name of a small village in France. While these uses other than as a surname may be obscure, they nevertheless do exist in stark contrast to absolutely no known uses of DE TAVERNAY or TAVERNAY as surnames. Based on the foregoing, it cannot be said that DE TAVERNAY is primarily merely a surname.
Decision: The refusal to register is reversed.
G. D. Krugman
E. W. Hanak
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 525,885 filed March 8, 1985. The application is based on a French registration under Section 44(e).