Binda International S.A.

Trademark Trial and Appeal Board

May 11, 2006

No. 78313893 (T.T.A.B. May. 11, 2006)

Mailed:
May 11, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Binda International S.A.
________

Serial No. 78313893
_______

Cecelia M. Perry of McGlew and Tuttle for Binda
International S.A.

Christina Brightmire King, Trademark Examining Attorney,
Law Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Hairston, Bucher and Holtzman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Binda International S.A. seeks registration on the
Principal Register of the mark BREIL for goods identified as
“horological and chronometric instruments, precious stones,
jewelry and costume jewelry articles” in International
Class 14.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to

1 Application Serial No. 78313893 was filed on October 15,
2003 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 78313893
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register this designation based upon the ground that the
proposed mark is primarily merely a surname under Section
2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4).
Applicant and the Trademark Examining Attorney have
fully briefed the case. Applicant did not request an oral
hearing. We affirm the refusal to register.
In support of the surname refusal, the Trademark
Examining Attorney cites to evidence she placed into the
record:
A total of 43 listings from telephone books
in the United States are of record. These
listings identify use of the surname in
fourteen (14) geographically dispersed
states: California, Colorado, Florida,
Illinois, Indiana, Massachusetts, Michigan,
New Jersey, New York, Ohio, Oregon,
Pennsylvania, Virginia and Wisconsin.
Additional evidence from the Nexis database,
made of record in the first Office action
issued May 31, 2004, indicates coverage of
stories involving persons whose surname is
BREIL, namely, Lynne, Klaus, Rebecca, John,
Dolores, Phyllis, Kimberley, Ilan and Peter.
Use of the surname for individuals mentioned
in materials originated in many geographical
areas of the United States, namely, York
Daily Record (York, PA), The Seattle Times,
The York Dispatch (York PA), Buffalo News
(New York), Richmond Times Dispatch
(Virginia), Art Business News and The
Wichita Eagle, Daily Variety, and
Ophthalmology Times.

However, applicant argues that the Trademark Examining
Attorney has failed to establish a prima facie surname
Serial No. 78313893
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case. Applicant alleges that “[t]he rule is an unusually
large number of directory listings are needed to carry the
burden of proof,” citing to In re Harris-Intertype Corp.,
518 F.2d 629, 186 USPQ 238 (CCPA 1975) to support this
proposition. Applicant goes on to allege that the
Trademark Examining Attorney has not met her burden of
proof with “a listing of 40 white page occurrences and 15
NEXIS occurrences.” Applicant concedes that while the
designation BREIL “can be considered a very rare surname” …
“out of a population of about 296,217,713 in the United
States this is .00001687%.” Applicant argues repeatedly
that the term BREIL is not likely to be perceived as a
surname but will instead be thought of as a coined or
fanciful word. Applicant also contends that there is no
one in the applicant company who has the BREIL surname;
that the word “Breil” does not have the look and feel of a
surname; and that any doubt should be resolved in favor of
applicant. Acknowledging that there is no other recognized
meaning for the word “Breil,” applicant argues that this
fact alone does not establish BREIL to be primarily merely
a surname, especially in light of its rarity as a surname.
The test for determining whether a mark is primarily
merely a surname is the primary significance of the mark to
Serial No. 78313893
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the purchasing public. See In re Hutchinson Technology
Inc., 852 F.2d 552, 554, 7 UPQ2d 1490, 1492 (Fed. Cir.
1988), citing In re Kahan & Weisz Jewelry Mfg. Corp., 508
F.2d 831, 184 USPQ 421 (CCPA 1975) and In re Harris-
Intertype Corp., supra. The initial burden is on the
Trademark Examining Attorney to establish a prima facie
case that a mark is primarily merely a surname. See In re
Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ
652, 653 (Fed. Cir. 1985). After the Trademark Examining
Attorney establishes a prima facie case, the burden shifts
to the applicant to rebut this finding.
The Board, in the past, has considered several
different factors in making a surname determination under
Section 2(e)(4) on terms shown in standard character
drawings:
(i) the degree of surname rareness;
(ii) whether anyone connected with applicant has the
surname;
(iii) whether the term has any recognized meaning
other than that of a surname; and
(iv) the structure and pronunciation or “look and
feel” of the surname.
In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995).
We find that the Trademark Examining Attorney has met
her initial burden of establishing that BREIL is primarily
Serial No. 78313893
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merely a surname. In particular, the Trademark Examining
Attorney has presented evidence of forty-three listings
from telephone books coupled with fifteen occurrences in
the Nexis/Lexis database. The Court of Appeals for the
Federal Circuit has held that this type of evidence is
sufficient to establish a prima facie surname case. See
Hutchinson Technology, 7 USPQ2d at 1492; Darty, 225 USPQ at
653; see also 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION, § 13.30, p. 13-50 (4th ed. 2001).
The Trademark Examining Attorney’s evidence is
collected from electronic versions of national telephone
directories. There is no magic number of directory
listings required to establish a prima facie surname case.
In re Gregory, 70 USPQ2d 1792 (TTAB 2004); In re Cazes,
21 USPQ2d 1796, 1797 (TTAB 1991); In re Industrie Pirelli
Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988), aff’d
unpublished decision No. 89-1231, 883 F.2d 1026 (Fed. Cir.
1989). Based upon the BREIL surname references in the
various Lexis/Nexis databases, we conclude that at a
minimum, dozens of persons currently living in the United
States have the surname “Breil.”2

2 We note that the evidence in this case is more compelling
than that in several reported cases where a rare surname was
found to be registrable – especially when a limited number of
Serial No. 78313893
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We note that applicant dismisses the various listings
the Trademark Examining Attorney submitted for the record
inasmuch as “out of a population of about 296,217,713 in
the United States this is .00001687%.” However, we find
applicant’s arguments as to the infrequency of the
occurrences in the record to be a hollow reed. The rich
diversity of surnames in this country is amply reflected in
computer database evidence. If one were to take a
statistical measurement of this database for common names
like “Smith” or “Jones,” each would constitute a relatively
small fraction of the total database content. Gregory,
supra at 1795.
In any event, the Trademark Examining Attorney also
has made of record excerpts of articles found in her Nexis
search of the term “Breil.” These excerpts show that some
persons named in these news articles are different from
those listed in the telephone listings mentioned above.

listings is combined with other relevant factors. See e.g. Kahan
& Weisz, 184 USPQ at 422 (six DUCHARME surname telephone
directory listings); and In re Garan, Inc., 3 USPQ2d 1537 (TTAB
1987)(six GARAN telephone directory listings and one NEXIS
listing); see also In re Sava Research Corp., 32 USPQ2d 1380
(TTAB 1994)(one hundred SAVA surname telephone directory
listings, but SAVA has other meanings, looks like an acronym, and
the Trademark Examining Attorney produced evidence of only one
individual having the surname SAVA with a search of the NEXIS
database); and Benthin Management, 37 USPQ2d at 1333 (one hundred
BENTHIN surname telephone directory listings, but the design mark
was presented in “a highly stylized form”).
Serial No. 78313893
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As to the second Benthin factor, there is no clear
evidence in this record that someone with the surname BREIL
is associated with applicant. Thus, based on the evidence
in this record, this factor is neutral.
The third Benthin factor we consider is whether the
term has a recognized meaning other than that of a surname.
According to the record, BREIL lacks any readily recognized
meaning in the ordinary parlance. Furthermore, applicant
conceded in its brief that BREIL has no other meaning than
that of a surname. Applicant’s brief at page 7.
Finally, we consider whether BREIL has the structure
and pronunciation – or the “look and feel” – of a surname.
In re Industrie Pirelli, 9 USPQ2d at 1566. The Board found
PIRELLI to be a surname because, inter alia, it “looks like
an Italian surname, being similar in structure to Italian
surnames which do appear in excerpts from the American
Surnames reference book made of record by applicant (viz.,
Antonelli, Mancinelli, Pacelli, etc.).” Id. at 1565. The
term BREIL has a similar structure and pronunciation to
related Germanic surnames such as BRULE, BRIEL and
BREILING. See Garan, 3 USPQ2d at 1538. Accordingly, on
this factor, we agree with the Trademark Examining Attorney
that BREIL would be perceived only as a surname.
Serial No. 78313893
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By contrast, if a term does not have the look and feel
of a surname, such that consumers are likely to view it as
something other than a surname, it would not be primarily
merely a surname. For example, the term HACKLER will not
be perceived as primarily merely a surname when used in
connection with alcoholic beverages. In addition to the
fact that the term HACKLER has a dictionary meaning that
appears to tie into these goods, the term HACKLER does not
have the clear “look and feel” of a surname. In re United
Distillers plc, 56 USPQ2d 1220 (TTAB 2000). See also
Benthin Management, supra. That is clearly not the case
herein.
As to applicant’s suggestion, made for the first time
in its brief, that in spite of a finding that this is
primarily merely a surname, it has acquired distinctiveness
as a source indicator for watches, we agree with the well-
articulated position expressed by the Trademark Examining
Attorney in her appeal brief:
Applicant further argues that BREIL is a
famous trademark, it was registered by
Applicant’s predecessor for watches on the
Principal Register for 21 years but was not
renewed due to non-use in the United States
and that a surname refusal was not given
during the prosecution of the original
application. Applicant further argues that
BREIL is registered in several countries and
that the goods are sold throughout the world
Serial No. 78313893
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and that BREIL has gathered trademark
significance worldwide and is a well-known
watch through the sale and advertising
throughout the world. Applicant further
stated that American purchasers of fine
watches know BREIL and will associate the
trademark with watches. The fame of the
applicant’s mark and the earlier existence
of a previous registration would certainly
be relevant factors in establishing
distinctiveness under Section 2(f) of the
Trademark Act. Applicant has not claimed
the benefits of Section 2(f) and, without a
formal claim of distinctiveness under
Section 2(f), the evidence of fame and a
prior registration cannot serve as the basis
for allowing registration of applicant’s
mark. See In re McDonald’s Corp., 230 USPQ
304, 307 (TTAB 1986).

In conclusion, while BREIL is a rare surname, it has
the look and feel of a surname, the record points to no
other recognized meaning for this term, and applicant has
not attempted to take advantage of the provisions of
Section 2(f) of the Act.
Decision: The refusal to register the term BREIL
under Section 2(e)(4) of the Act is hereby affirmed.