Cardano Risk Management B.V.

Trademark Trial and Appeal Board

Jun 7, 2012

No. 85230910 (T.T.A.B. Jun. 7, 2012)

Mailed: June 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cardano Risk Management B.V.
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Serial No. 85230910
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William C. Wright of Epstein Drangel LLP for Cardano Risk
Management B.V.

Jeffrey J. Look, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
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Before Quinn, Wellington, and Lykos,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Cardano Risk Management B.V. (applicant), a Dutch
corporation, has filed an application to register the mark
CARDANO on the Principal Register in standard character
form for “financial services, namely, financial risk
management consultation, financial investment advisory
services, monetary strategy consultation and research,
investment services, namely, asset consultation and
development services; financial asset and liability
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85230910
2
management; consultancy in the field of strategic use of
financial derivatives” in International Class 36.1
The examining attorney refused registration on the
ground that the mark is primarily merely a surname under
Section 2(e)(4) of the Trademark Act, 15 U.S.C.
§ 1052(e)(4). When the refusal was made final, applicant
filed a request for reconsideration which the examining
attorney rejected. Applicant then appealed; both applicant
and the examining attorney have filed briefs on the case,
including a reply brief filed by applicant.
We reverse the refusal.
Section 2(e)(4) of Trademark Act precludes
registration of a mark which is “primarily merely a
surname” on the Principal Register without a showing of
acquired distinctiveness under Section 2(f) of the Act, 15
U.S.C. § 1052(f). We must decide on the facts of each case
whether the mark at issue is “primarily merely a surname”
under the Act. See In re Etablissements Darty et Fils, 759
F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985). The examining
attorney bears the initial burden to make a prima facie
showing of surname significance. See id. If the examining
attorney makes that showing, then we must weigh all of the

1 Serial No. 85230910 was filed on February 1, 2011 based on
Sections 1(b) (intent-to-use) and 44(e) (ownership of a foreign
Serial No. 85230910
3
evidence from the examining attorney and the applicant to
determine ultimately whether the mark is primarily merely a
surname. See In re Sava Research Corp., 32 USPQ2d 1380,
1381 (TTAB 1994). If there is any doubt, we “are inclined
to resolve such doubts in favor of applicant.” See In re
Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995).
In determining whether a proposed mark is primarily
merely a surname, we consider the following: (1) the
degree of the surname’s “rareness”; (2) whether anyone
connected with applicant has the mark as a surname; (3)
whether the mark has any recognized meaning other than as a
surname; and (4) whether the mark has the “look and sound”
of a surname. Id. at 1332-33.2
We first look at the “rareness” of the surname. The
examining attorney has submitted the results of a search
from the White Pages website (www.whitepages.com –
information ascertained from website on May 2, 2011), a
nationwide telephone directory database, showing the
surname “Cardano” appeared in “100+ results” for telephone

registration). The application was subsequently amended by
applicant to delete the Section 1(b) filing basis.
2 A fifth Benthin factor, whether the manner in which the mark is
displayed might negate any surname significance, is not relevant
to our analysis inasmuch as applicant seeks registration of
CARDANO in standard character form.
Serial No. 85230910
4
numbers.3 However, upon closer inspection of the full
results of this search, the actual number of results
appears to be closer to 100 and is further diminished by
apparent duplicate entries. The examining attorney also
points out article excerpts from various newspapers or
other publications that mention individuals with the
surname “Cardano.” The article excerpts are not
concentrated in any one geographic region and identify
individuals in various states.
We find, based on the evidence, that CARDANO is an
extremely rare surname. This factor weighs heavily given
the purpose of Section 2(e)(4) of the Act. As explained by
Judge Seeherman in her concurrence in In re Joint-Stock
Company “Baik”, 84 USPQ2d 1921 at 1924 (TTAB 2007), the
“purpose behind prohibiting the registration of marks that
are primarily merely surnames is not to protect the public
from exposure to surnames,... Rather, the purpose behind
Section 2(e)(4) is to keep surnames available for people
who wish to use their own surnames in their businesses...”

3 Applicant also submitted with its request for reconsideration
information from the 2000 U.S. Census indicating that there are
approximately 119 individuals with the surname CARDANO in the
United States (www.census.gov). The examining attorney submitted
additional explanatory materials regarding the census data. This
data is twelve years old and no further information has been
submitted whereby we can extrapolate or infer that there may be
more or less people with the surname CARDANO since the time the
census was taken.
Serial No. 85230910
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And, “in a case such as this involving a very rare surname,
we cannot assume that the purchasing public will view the
mark as a surname based on exposure to the surname use.”
Id. (in main opinion) at 1923-4, citing In re Garan Inc., 3
USPQ2d 1537, 1540 (TTAB 1987).
We turn next to the second factor and look to whether
anyone associated with applicant has the surname “Cardano.”
As the examining attorney acknowledges in his brief,
applicant has asserted there is no one with the surname
“Cardano” associated with applicant and the examining
attorney “has no evidence” to the contrary. Brief, p. 10.
Accordingly, this factor is neutral.
The third factor is whether there is a recognized non-
surname meaning for “Cardano,” and we conclude there is
not. The examining attorney has submitted evidence showing
that it has no defined meaning. Applicant argues at length
that the “primary significance” of “Cardano” is that it
will be associated with “Gerolamo Cardano,” an Italian
Renaissance mathematician and physician. Brief, p. 8.
Applicant argues that the recited services in the
application are “intricately tied with mathematics” and
that this “significance would not be lost or unknown to
applicant’s consumers.” Id. Applicant cites to its own
website that includes a section “Who was Cardano?” with a
Serial No. 85230910
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brief biography, including a mention of his study of
probability. Ultimately, however, we agree with the
examining attorney that the evidence fails to show that
Gerolamo Cardano is considered a well-known historical
figure such that the proposed mark will be associated with
the mathematician. See, e.g., In re Champion International
Corporation, 229 USPQ 550 (TTAB 1985) (primary significance
of McKinley is as a surname, not of the historical figure).
Compare In re Pyro-Spectaculars Inc., 63 USPQ2d 2022, 2024
(TTAB 2002)(SOUSA not merely a surname); and Lucien Piccard
Watch Corp. v. Since 1868 Crescent Corp., 314 F.Supp. 329,
165 USPQ 459, 461 (S.D.N.Y. 1970) (primary significance of
DA VINCI is not merely a surname).
Finally, as to the fourth factor, namely, whether the
proposed mark has the “structure and pronunciation” (or,
stated differently, the “look and sound”) of a surname, the
record is silent in this regard. For example, there is no
evidence showing the popularity of similarly-constructed
surnames, e.g., other surnames that either begin with
“card” or end with “dano” or otherwise bear a resemblance
to “cardano.” Without such evidence, we cannot find that
applicant’s mark has the “look and sound” of a surname. We
also note that the examining attorney does not actually
assert this point, but merely rebuts applicant’s assertions
Serial No. 85230910
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that “cardano” bears a resemblance to the term “cardio.”
To be clear, the examining attorney does not explain how or
why the proposed mark has the “look and sound” of a
surname. Accordingly, we make no finding with regard to
this factor.
In balancing the aforementioned factors, we accord
significant weight to the rareness of the surname,
realizing that the likelihood of any individual with the
surname “Cardano” who may seek to use their surname in a
trademark for similar services or goods is greatly reduced
by the rareness of the surname. This outweighs the fact
that the proposed mark has no defined meaning. On this
record, we find that the Office has not met its burden of
proving that the mark is primarily merely a surname.
Furthermore, to the extent we had any doubt in our
decision, we resolve such doubt in favor of applicant. See
In re Benthin Management GmbH, 37 USPQ2d at 1334.
Decision: The refusal to register applicant’s mark on
the ground that it is primarily merely a surname is
reversed.