Chiaro Networks, Inc.

Trademark Trial and Appeal Board

Aug 21, 2003

No. 76166140 (T.T.A.B. Aug. 21, 2003)

Mailed: August 21, 2003
Paper No.19
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Chiaro Networks, Inc.
________
Serial No. 76/166,140
_______
Linda M. Merritt of Fulbright & Jaworski L.L.P. for Chiaro
Networks, Inc.
Amos Matthews, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Hohein, Holtzman and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Chiaro Networks, Inc. has filed an application to
register the mark "CHIARO" for "computer hardware and computer
software for controlling and operating computer and telephony
networks."1
Registration has been finally refused under Section
2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4), on the
ground that the mark which applicant seeks to register is
primarily merely a surname.
1 Ser. No. 76/166,140, filed on November 16, 2000, which is based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/166,140
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
As an appropriate starting point for analysis, we
observe that as stated by the Board in In re Hamilton
Pharmaceuticals Ltd., 27 USPQ2d 1939, 1940 (TTAB 1993):
At the outset, it is well settled that
whether a mark is primarily merely a surname
depends upon whether its primary significance
to the purchasing public is that of a
surname. The burden is upon the Examining
Attorney, in the first instance, to present
evidence sufficient to make out a prima facie
showing in support of the contention that a
particular mark is primarily merely a
surname. Provided that the Examining
Attorney establishes a prima facie case, the
burden shifts to the applicant to rebut the
showing made by the Examining Attorney. See
In re Harris-Intertype Corp., 518 F.2d 629,
186 USPQ 238, 239-40 (CCPA 1975) and In re
Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d
831, 184 USPQ 421, 422 (CCPA 1975). Whether
a term sought to be registered is primarily
merely a surname within the meaning of ...
the Trademark Act must necessarily be
resolved on a case by case basis and, as is
the situation with any question of fact, no
precedential value can be given to the amount
of evidence apparently accepted in a prior
proceeding. See In re Etablissements Darty
et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed.
Cir. 1985). ....
Moreover, as set forth by the Board in In re United Distillers
plc, 56 USPQ2d 1220, 1221 (TTAB 2000):
Among the factors to be considered in
determining whether a term is primarily
merely a surname are the following: (i)
whether the surname is rare; (ii) whether
anyone connected with applicant has the
involved term as a surname; (iii) whether the
term has any other recognized meaning; and
(iv) whether the term has the "look and feel"
of a surname. See In re Benthin Management
GmbH, 37 USPQ2d 1332[, 1333] (TTAB 1995).
Ser. No. 76/166,140
3
In the present case, we agree with the Examining
Attorney that, contrary to applicant's contentions, the record
contains sufficient evidence to make out a prima facie case that
the primary significance of the mark "CHIARO" to the purchasing
public for applicant's goods is that of a surname and that such
showing has not been rebutted by applicant. Specifically, the
Examining Attorney has made of record the following evidence in
support of his refusal: (i) a copy of the results of a search of
the "infoU.S.A." (formerly "PhoneDisc") database, version 2002,
which shows a total of 395 residential listings in the United
States were found for individuals with the surname "CHIARO";2
(ii) copies of the pertinent pages from Webster's New
Geographical Dictionary (1988) and The American Heritage
Dictionary (2d coll. ed. 1982) which show an absence of any
listing for the term "CHIARO"; and copies of portions from 29
stories retrieved from a search of the "NEXIS" database which
refer to individuals in the United States with the surname
"CHIARO."3
Applicant, in its initial brief, maintains that the
above evidence, as well as the evidence which it has furnished in
2 Applicant, we note, points out in its initial brief that, as part of
its request for reconsideration of the final refusal, it submitted the
results from an updated "InfoUSA search showing [that] a total of 431
consumers with the last name of 'Chiaro' are contained in the InfoUSA
consumer database current as of July 18, 2002" and that such database
"contains information for more than 250 million consumers."
3 Like applicant's analysis (discussed later in this opinion) of the
results of its own searches of such database, we have not counted in
the above total the six other stories included by the Examining
Attorney in his search which mention individuals with the surnames
Ser. No. 76/166,140
4
rebuttal thereto, including "genealogical information" obtained
from "the U.S. Census Bureau's website" which shows "frequently
occurring surnames based on the 1990 census," demonstrates that
while a surname, the mark "CHIARO" is a rare surname. The
rareness thereof, applicant urges, is a factor in its favor
inasmuch as it weighs against a finding that the mark would be
perceived as primarily merely a surname. See, e.g., In re
Benthin Management GmbH, supra; and In re Sava Research Corp., 32
USPQ2d 1380, 1381 (TTAB 1994). Although, in his brief, the
Examining Attorney "concedes that CHIARO is a rare surname in the
United States," he correctly notes that "the fact that a surname
is rare does not necessarily mean that its primary significance
is something other than that of a surname." See, e.g., In re
Etablissements Darty et Fils, supra; In re Rebo High Definition
Studio Inc., 15 USPQ2d 1314, 1315 (TTAB 1990); In re Pohang Iron
& Steel Co., Ltd., 230 USPQ 79, 80 (TTAB 1986); and In re Joseph
Picone, 221 USPQ 93, 95 (TTAB 1984). Likewise, while we concur
that "CHIARO" is shown by the record to be a rare surname, we
find as discussed below that the primary significance thereof to
the purchasing public for applicant's goods is only that of a
surname.
Admittedly, the surname "CHIARO" is not the surname of
anyone associated with applicant. Applicant, in its response to
the first Office action, "advise[d] the Examining Attorney that
there is no one presently connected with Applicant or its
"del Chiaro" and "de Chiaro" inasmuch as the mark applicant seeks to
register is "CHIARO."
Ser. No. 76/166,140
5
predecessors or founders having the surname 'Chiaro'" and, in its
request for reconsideration, reiterated that "[n]o founder,
officer, board member or other individual connected with
Applicant is shown to have 'Chiaro' as a surname." We agree with
the Examining Attorney, however, that as argued in his brief,
such fact "does not mean that the primary significance of such
term to the purchasing public is other than that of a surname,"
given the other appreciable evidence of surname significance
(e.g., the negative dictionary evidence showing an absence of any
listing--and hence a lack of non-surname meaning--for the term
"chiaro" and the numerous "NEXIS" excerpts demonstrating use of
such term as a surname) in the record. Clearly, therefore, the
absence of any association with applicant's business of anyone
with the surname "CHIARO" is not as probative with respect to
demonstrating a lack of primary surname significance as the
converse would be in establishing that such term has primary
significance as a surname. Consequently, just as the surname
"PETRIN," for example, was found in In re Petrin Corp., 231 USPQ
902, 904 (TTAB 1986), to have primary significance as a surname
even though no one with such surname was associated with the
applicant for registration therein, the same is true with respect
to the surname "CHIARO" which applicant seeks to register.
Applicant relies heavily upon the argument that the
term "chiaro" has a recognized meaning other than that of a
surname. Specifically, applicant observes in its initial brief
that, as shown by the excerpts from various online Internet
dictionaries which it submitted in response to the first Office
Ser. No. 76/166,140
6
action, "the word 'chiaro' means 'light', 'clear', 'evident', or
'obvious' in Italian." Likewise, applicant notes, the "excerpts
from seven hardcopy dictionaries containing Italian to English
translations," which applicant furnished with its request for
reconsideration, demonstrate that "the term 'chiaro' means
'light', 'clear', 'evident', or 'obvious' in Italian" and, in
addition, "show that the term in the Italian language can also
mean 'bright'." Applicant contends that such meaning would be
apparent to customers for its goods because, as illustrated by
the record:
Applicant's website (created in April-
May 2000) ... shows that it emphasizes the
meaning of the word "chiaro" as "clear",
"bright", or "light" in its promotional
efforts. First, the logo appearing with the
mark consists of a "C" overlaying a
background of light rays. Further, the
website's homepage includes a translation of
the word "chiaro" as "clear", "bright", or
"light". Finally, the website information
referring to career opportunities with
Applicant uses the phrase "We're looking for
people who see the light!" Nowhere does the
website use the term "chiaro" as a surname.
Therefore, Applicant's promotional efforts
support [the] conclusion that "chiaro" has a
recognized meaning other than as a surname.
The Examining Attorney, while acknowledging in his
brief that if a "term has [a] well known meaning as a word in the
language it is not primarily merely a surname," insists that
applicant's "submission of a non-surname meaning in the Italian
language is not persuasive and will not overcome the surname
significance of [such] a term." Applicant, however, urges in its
initial brief that "there is no basis in the case law" for the
Examining Attorney's position that "only an English language
Ser. No. 76/166,140
7
meaning will suffice to establish that 'chiaro' has a recognized
meaning other than as a surname." In particular, "based on the
doctrine of foreign equivalents," applicant asserts that:
[T]he Board has looked at foreign
language meanings in assessing whether marks
at issue in other cases were primarily merely
surnames. For example, in In re Industrie
Pirelli [Societa per Azoni], the Board relied
on evidence that the term 'pirelli' had no
ordinary meaning in the Italian language,
based on an excerpt from an Italian
dictionary, to support its conclusion that
PIRELLI was primarily merely a surname. 9
U.S.P.Q.2d 1564, 1566 (T.T.A.B. 1988).
Furthermore, the Board has taken judicial
notice that there are many people in the
United States who speak and read Italian. In
re E. Martinoni Co., 189 U.S.P.Q.2d 589, 590
(T.T.A.B. 1976). Accordingly, the evidence
on the record ... establishes that "chiaro"
has a recognized meaning other than as a
surname such that this factor should weigh in
favor of a conclusion that the CHIARO mark
should not be refused registration on the
basis of being "primarily merely a surname."
While the Board in Pirelli, supra, did indeed state
among other things that the term "'Pirelli' has no ordinary
meaning in the Italian language, as the Italian dictionary
excerpt, made of record by the Examining Attorney, shows"
(italics added), nothing in the Board's decision indicates that
its finding of the primary significance of the rare surname
"PIRELLI" to be that of a surname would have been different if
such surname had been demonstrated to have another meaning to
those knowledgeable in the Italian language. Rather, as set
forth in, for instance, In re BDH Two Inc., 26 USPQ2d 1556, 1558
(TTAB 1993), "it is the surname significance of the term in the
United States which is determinative of the registrability issue"
and, thus, the fact that "there are no other meanings of
Ser. No. 76/166,140
8
'graingers' in the English language " (italics added) was a
relevant factor leading to the holding that the term "GRAINGERS,"
which was sought to be registered for crackers and snack chips
made from one or more processed cereal grains, was "suggestive of
the grain-based nature of the products" and not primarily merely
a surname. Plainly, given that English is the predominant
language in the United States, it is accordingly the case that,
in order for another meaning of a surname to have a bearing upon
whether the primary significance thereof is that of a surname,
the other or alternative meaning generally must be that of an
ordinary, readily recognizable (rather than obscure) English term
as opposed to that of a foreign word. See, e.g., In re Hamilton
Pharmaceuticals Ltd., supra at 1942; and In re Nelson Souto Major
Piquet, 5 USPQ2d 1367, 1367-68 (TTAB 1987). It is evident that,
in this case, the additional meaning asserted by applicant for
the surname "CHIARO" is that of an Italian word which, while
susceptible to translation into English, is nonetheless not an
English term itself.
Moreover, even assuming that it would be proper to take
into consideration the fact that the surname "CHIARO" also is an
Italian term which has a meaning of "light," "clear," "evident,"
"obvious" or "bright," we disagree with applicant that such
meaning would ordinarily be known to the average purchaser of
goods of the kinds offered by applicant under the mark "CHIARO,"
so that the primary significance of the mark would not be that of
a surname. Suffice it to say that, while some of applicant's
customers may be fluent in Italian, most would not be
Ser. No. 76/166,140
9
knowledgeable of the non-surname significance of the term.
Clearly, the term is not a cognate which would have an
immediately apparent translatable meaning in English. Although
the homepage for applicant's website does indeed feature, below
the logo for its "CHIARO" mark, the slogan "setting information
free" which is followed by the definition "chiaro: (kē r' ō) adj.
{It} clear or bright; light," the fact that applicant apparently
finds it necessary to include such a definition in order for its
customers to be aware of the meaning thereof in Italian would
seem to belie applicant's assertion that the term "chiaro" has
another readily and commonly understood meaning. Furthermore,
inasmuch as the excerpts from applicant's website reveal that its
principal products involve "a unique optical packet switching
technology," it is obvious that the displays on its website, such
as a reference to career opportunities with applicant through use
of the phrase "We're looking for people who see the light!," or
the rays emanating from a stylized letter "C" above the term
"CHIARO," merely underscore the fiber optic or light-based nature
of its hardware and software for controlling and operating
computer and telephony networks. Such displays, and their double
entendres, consequently play up the association of applicant's
goods with light and fiber optic networks, but they do not
necessarily serve to convey the English meaning of the Italian
term "chiaro" to those otherwise unfamiliar therewith. In any
event, that it appears that applicant needs to coach its
customers as to the English significance of the Italian word
"chiaro" is indicative that, in the absence of such prompting,
Ser. No. 76/166,140
10
the word would primarily convey only its ordinary meaning as a
surname.
Applicant further argues, however, that "[i]n addition
to the dictionary and promotional evidence discussed above," the
searches which it had conducted in the "NEXIS" database and made
of record show "significant non-surname usage of 'chiaro'" and
thus "support ... its contention that 'chiaro' has a recognized
meaning other than as a surname." In particular, based upon the
analysis thereof by a law clerk to applicant's counsel, of the
"1,476 hits" from such searches, "approximately 268 relevant
references to 'chiaro'" were found, "after eliminating duplicate
references to the same individual or entity, foreign publications
and usages of terms other than 'chiaro'" (e.g., "non-surname
usages such as 'Chiaro's"), of which "221 used the term 'chiaro'
as a surname and the remaining 47 used the term 'chiaro' in a
non-surname sense."4 Applicant, in its initial brief, asserts in
view thereof that:
4 Declaration of Ms. Tiffini Smith-Peaches, ¶¶4 and 5. It is pointed
out, however, that as set forth in TMEP Section 1211.01(b)(v) (3d ed.
2d rev. May 2003):
The surname significance of a term is not diminished
by the fact that the term is presented in its plural or
possessive form. See In re Woolley’s Petite Suites, 18
USPQ2d 1810 (TTAB 1991) (WOOLLEY’S PETITE SUITES for hotel
and motel services held primarily merely a surname); In re
McDonald’s Corp., 230 USPQ 304, 306 (TTAB 1986) (MCDONALD’S
held primarily merely a surname based on a showing of
surname significance of "McDonald," the Board noting that
"it is clear that people use their surnames in possessive
and plural forms to identify their businesses or trades");
In re Luis Caballero, S.A., 223 USPQ 355 (TTAB 1984)
(BURDONS held primarily merely a surname based in part on
telephone listings showing surname significance of
"Burdon"); In re Directional Marketing Corp., 204 USPQ 675
(TTAB 1979) (DRUMMONDS held primarily merely a surname
based on a showing of surname significance of "Drummond").
Ser. No. 76/166,140
11
As can be seen from the analysis performed
..., 47 of the 268 relevant references used
"chiaro" in its non-surname sense; i.e., as
meaning "light", "bright", or "clear". For
example, there were numerous references to a
restaurant in Little Italy in New York City,
"Mare Chiaro", "mare" meaning "sea". HARPER
COLLINS POCKET ITALIAN DICTIONARY 144 (3d ed.
1999). There were also numerous references
to a ship called the Monte Chiaro, "monte"
meaning "mountain". Id. at 153. There were
also several references to "chiaro" in the
name of Italian foods. .... Based on the
foregoing, it is Applicant's contention that
the NEXIS evidence shows that "chiaro" has a
recognized meaning other than as a surname
such as this factor should weigh in favor of
a conclusion that CHIARO as a trademark is
not primarily merely a surname.
We disagree with applicant's contention. Among other
things, applicant's analysis is clearly skewed towards maximizing
the number of non-surname instances in which the term "chiaro"
appears. While we have no problem with its eliminating from
consideration those usages "that did not constitute the usage of
'chiaro' itself as a surname,"5 by the same token it should have
also eliminated from analysis those usages, such as "Mare Chiaro"
and "Monte Chiaro," that did not involve usage of "chiaro" per se
in a non-surname manner. Furthermore, as the Examining Attorney
observes in his brief, "what applicant's ... [analysis has]
failed to indicate is that a majority of the non-surname stories
Therefore, while the failure to consider "usages such as 'Chiaro's'"
to be surname rather than "non-surname" usages was error and the
totals for relevant references and surname references should be higher
than those stated by the declarant, we have for the sake of simplicity
considered the figures as submitted by applicant.
5 Declaration of Ms. Tiffini Smith-Peaches, ¶3.
Ser. No. 76/166,140
12
refers to applicant, Chiaro Networks."6 Even more importantly,
the non-surname instances of usage of "chiaro" by itself are
relatively minor or obscure, while those instances in which such
term is clearly utilized as a surname, comprising 221 instances
out of a total of 268 by applicant's analysis, constitute nearly
83% of the relevant references located by applicant. In light
thereof, it is plain that the primary significance of the term
"CHIARO" is its surname significance, and that the various other
usages thereof do not detract from such significance.
As a final factor for consideration, applicant asserts
that the term "CHIARO" does not have the "look and feel" of a
surname. Again, relying on an analysis performed by a law clerk
to its counsel, applicant notes in its initial brief that, of
"607 other Italian family names" taken from "a complete list of
Italian surnames excerpted from the genealogical reference book
People's Names," "only 7 ... end with the suffix 'aro'." Based
on such analysis, which is of record, applicant maintains that
"'Chiaro' does not have the look and feel that one associates
with Italian surnames."
The Examining Attorney, on the other hand, urges in his
brief that "it is likely that CHIARO would be viewed as a
surname," "given the well-known fact that Italian surnames often
end with a vowel." Consequently, according to the Examining
6 Although applicant, in its reply brief, indicates that "[i]n making
the assessment that, of the 268 relevant references in the Nexis
search[es] that remained after eliminating duplicates, 221 consisted
of surnames and 46 showed non-surname usage, the occurrence of
Applicant itself was counted as one non-surname usage," it is still
the case that the most common non-surname usage shown is that of
references to applicant.
Ser. No. 76/166,140
13
Attorney, "the term CHIARO would appear to have the structure and
pronunciation of [a surname of] Italian heritage and would be so
recognized by the purchasing public." Applicant's rejoinder, as
set forth in its reply brief, that the Examining Attorney's
"statement is of no more relevance than a statement that non-
Italian surnames often end with a consonant" because "[t]he last
letter of any word must necessarily be either a consonant or a
vowel" misses the mark. Applicant's own evidence not only
confirms the Examining Attorney's statement, but shows that
almost invariably, Italian surnames end with a vowel. Indeed, of
the 607 Italian surnames listed in the excerpt of record from the
genealogical reference book People's Names, all but seventeen of
such names, that is, a total of 590 or 97%, end with a vowel.
In view thereof, there is support in the record for
finding that the term "CHIARO" has the look and feel of a surname
of Italian origin and, perhaps more importantly, we cannot say
that, as urged by applicant, it is clearly the case that it does
not. While to us, such term has the look and feel of an Italian
heritage surname, we nevertheless realize that, given the highly
subjective nature of the determination to be made, others may
regard the term as one which looks and/or sounds like an Italian
word but which is not necessarily a surname. This latter point
of view concededly finds some support in the record inasmuch as
"Chiaro," as noted by applicant, is not among the surnames listed
in the excerpt from People's Names and only seven of the 607
names which do appear, or just over 1%, end in the suffix "-aro."
Consequently, we agree with applicant's alternative conclusion,
Ser. No. 76/166,140
14
as set forth in its initial brief, that "[t]he most that can be
said is that this 'look and feel' factor is neutral as applied to
'chiaro'."
We accordingly conclude that, while a rare surname and
one which is not the surname of anyone connected with applicant,
the mark "CHIARO" is nevertheless primarily merely a surname
inasmuch as it is unlikely to have any readily recognizable
meaning other than its surname significance.
Decision: The refusal under Section 2(e)(4) is
affirmed.