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We haven’t had a surname case in a while. Here the USPTO refused to register the proposed trademark
BORRELLO’S for various mobile phone accessories and related goods, on the grounds that the mark is primarily only a surname within the meaning of Article 2(e)(4). Plaintiff James Lyons has argued that the term has a meaning other than surname: it is the name of a commune and town in the province of Chieti in the Abruzzo region of Italy, which is a place of historical significance, named after the iconic ruling Borrello. family. How do you think that came out?
In re James Lyonsserial number 90242811 (November 10, 2022) [not precedential] (Opinion of Judge Mark Lebow).
In deciding the surname issue, the Commission considers a variety of factors, including the extent to which the term is exposed to the public as a surname; whether the term is the surname of anyone related to the applicant; whether the term has a recognized meaning other than surname; and whether the term has the structure and pronunciation of a surname.
Examining attorney Toby Bulloff provided evidence from the LEXIS/NEXIS surname database showing BORRELLO occurring 761 times as a surname nationwide. The Board concluded from the evidence that BORRELLO is a surname. The significance of his surname is not diminished by the fact that it is presented in its possessive form.
The examining prosecutor conceded that BORRELLO is a rare surname. However, “[t]The relevant question is not simply how often a surname appears…but whether the public purchasing Plaintiff’s wares is more likely to perceive Plaintiff’s proposed mark as a surname rather than otherwise. thing.” In re Tapio GmbH2020 USPQ2d 11387, at *9 (TTAB 2020).
He also provided a Wikipedia page identifying four supposedly notable people with the surname BORRELLO, but only one was from the United States (Brian Borrello, an American artist). The plaintiff asserted that BORRELLO is a “extremely uncommon name.”
It was not disputed that “no one associated with the plaintiff uses or bears the name Borrello”. The examining attorney provided negative evidence from Dictionary.net’s dictionary, as well as Collins’ Italian-English dictionary, to show that BORRELLO has no meaning in English or Italian.
Plaintiff Lyons argued that the main significance and significance of Plaintiff’s BORRELLO’S mark is related to a town and city in the province of Chieti in the Abruzzo region of Italy, which is a place of historical significance, named after the emblematic ruling family Borrello, today would have disappeared.
As to whether the term BORRELLO has any other recognized meaning other than surname, the Commission observed that “[a] a single Wikipedia page hardly provides us with sufficient basis to see that BORRELLO, the name of a small town in a foreign country, would be familiar to a sizable segment of Americans or would be perceived by them as anything other than a geographical location obscure.”
As to structure and pronunciation, the Board recognized that “[a]assess whether [a term] a the structure and pronunciation of a surname is a ‘resolutely subjective’ inquiry.” The examining attorney argued that the “-ELLO” suffix is common in Italian surnames and connotes “smaller” or ” small”. Lyons instead argued that BORRELLO “has the structure and pronunciation of a geographic location, not a surname, since that is the primary meaning of the term and in light of the structure and pronunciation typical of other Italian cities and regions (i.e. Milano, Palermo, Abruzzo, Veneto, Moltepulciano).”
The Board agreed with examining counsel that BORRELLO has the structure and pronunciation of a surname, specifically an Italian surname, and that the plaintiff’s use of the possessive is consistent with the use of a family name.
The Commission concluded that “there is no convincing evidence in the record that [BORRELLO’S] would be seen as something other than a surname in the United States. Cafe Eximius120 USPQ2d at 1283. And so, if confirmed the refusal of registration.
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