China Bluestar (USA) Group, Inc.

Trademark Trial and Appeal Board

Feb 20, 2002

No. 75762329 (T.T.A.B. Feb. 20, 2002)

2/20/02

Paper No. 9
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re China Bluestar (USA) Group, Inc.
________

Serial No. 75/762,329
_______

David W. Lee, Esq. for China Bluestar (USA) Group, Inc.

David E. Yontef, Trademark Examining Attorney, Law Office
105 (Thomas Howell, Managing Attorney).
_______

Before Cissel, Bottorff and Holtzman, Administrative
Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark “malan” (depicted in special form, in all lower
case letters, (without quotation marks)), for “coffee
shops, cafes, Chinese restaurants, buffet restaurants, and
fast food restaurants.”1
The Trademark Examining Attorney has refused
registration under Trademark Act Section 2(e)(4), 15 U.S.C.

1 Serial No. 75/762,329, filed July 28, 1999. The application is
based on intent-to-use, under Trademark Act Section 1(b), 15
U.S.C. §1051(b).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/762,329
2
§1052(e)(4), on the ground that the mark applicant seeks to
register is primarily merely a surname. When the refusal
was made final, applicant filed this appeal.
Applicant and the Trademark Examining Attorney have
filed main briefs; applicant did not file a reply brief.
No oral hearing was requested. We affirm the refusal to
register.
The Trademark Examining Attorney has made the
following evidence of record: the results of a search of
the PHONEDISC POWERFINDER U.S.A. ONE database (1999, 2nd
ed.) which retrieved 540 listings for the surname “Malan”
(out of a total of 115,000,000 listings); the results of a
search of the NEXIS database (NEWS library, US file) which
retrieved 5,493 articles from periodicals which include
references to “Malan,” and printouts of excerpts from
thirty-one of those articles, in each of which the term
appears as a different person’s surname;2 and printouts of
excerpts from the online versions of the American Heritage
Dictionary of the English Language (1992), Merriam
Webster’s Collegiate Dictionary (2000) and the Columbia
Encyclopedia (2000), each of which includes a biographical

2 The Trademark Examining Attorney, in his final office action to
which the NEXIS stories were attached, asserts that these thirty-
one excerpts are a representative sample of the stories retrieved
by the search. There is nothing in the record which contradicts
the Trademark Examining Attorney’s assertion.
Ser. No. 75/762,329
3
entry for Daniel Francois Malan, who is identified as a
South African politician who was the prime minister of
South Africa from 1948-1954.
Applicant has submitted (for the first time, as
attachments to its appeal brief) the following materials:3
applicant’s Chinese trademark registration of the mark
“malan and design”; applicant’s Chinese trademark
registration of a mark which consists of two Chinese-
language ideogram characters; samples of applicant’s
advertisements and business stationery, and photographs of
the signage for applicant’s restaurants; and printouts from
the Office’s TESS database of various third-party
registrations.
In deciding whether or not a term is primarily merely
a surname and thus is unregistrable under Section 2(e)(4),
we must determine the primary significance of the term to
the purchasing public. See In re Harris-Intertype Corp.,
518 F.2d 629, 186 USPQ 238 (CCPA 1975). The Office bears
the initial burden of establishing, prima facie, that the
primary significance of the term to the purchasing public

3 Because the Trademark Examining Attorney, in his brief, has not
objected to applicant’s untimely submission of these materials,
we have not excluded them pursuant to Trademark Rule 2.142(d),
but rather have considered them for whatever probative value they
might have. (As discussed infra, we find that these materials in
fact have little or no probative value.)

Ser. No. 75/762,329
4
is merely that of a surname. If that prima facie showing
is made, then the burden of rebutting that showing, i.e.,
the burden of showing that the primary significance of the
term to the purchasing public is other than that of a
surname, shifts to applicant. See In re Etablissements
Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985);
In re Harris-Intertype Corp., supra; In re Kahan & Weisz
Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (CCPA 1975);
In re Rebo High Definition Studio Inc., 15 USPQ2d 1314
(TTAB 1990); In re Luis Caballero, S.A., 223 USPQ 355 (TTAB
1984).
The determination as to whether the mark’s primary
significance to the purchasing public is that of a surname
takes into account various factors, such as: (i) the degree
of a surname’s rareness; (ii) whether anyone connected with
applicant has the surname in question; (iii) whether the
term in question has any recognized meaning other than that
of a surname; (iv) whether the term has the “look and
sound” of a surname; and (v) if the mark sought to be
registered is depicted in special form, whether the degree
of stylization of the mark is so great as to create a
separate commercial impression which renders the mark, as a
whole, not “primarily merely a surname.” See In re Benthin
Management GmbH, 37 USPQ2d 1332 (TTAB 1995).
Ser. No. 75/762,329
5
For the reasons discussed below, we find that the
evidence made of record by the Trademark Examining Attorney
suffices to establish, prima facie, that the primary
significance of the mark to the purchasing public is that
of a surname. We further find that applicant has failed to
rebut that prima facie showing by demonstrating that the
primary significance of the mark is other than that of a
surname.
Applicant argues that the Trademark Examining
Attorney’s evidence establishes, at best, that “Malan” is a
rare surname, inasmuch as the 540 PHONEDISC listings for
that name comprise only .00000469 of the 115,000,000 total
listings in that database.4 However, although the number of
listings for the surname “Malan” retrieved from the
PHONEDISC database perhaps is not particularly large as a

4 Applicant also argues that the Office has allowed many other
much more common surnames, such as HUGHES, to be registered.
However, the presence on the register of other surname marks,
such as the HUGHES marks relied on by applicant, is not
particularly relevant or probative evidence on the question of
whether applicant’s mark is registrable. A mark which is
primarily merely a surname, and thus unregistrable under
Trademark Act Section 2(e)(4), may nonetheless be registrable
under Section 2(f) if the requisite claim and showing of acquired
distinctiveness have been made. Review of the HUGHES
registrations made of record by applicant shows that most of
them, in fact, are registered pursuant to Section 2(f).
Applicant has made no Section 2(f) claim or showing of acquired
distinctiveness in this case. See e.g., In re Cazes, 21 USPQ2d
1796 (TTAB 1991); In re McDonald’s Corp., 230 USPQ 304 (TTAB
1986); and In re Royal Overseas Traders, Inc., 184 USPQ 575 (TTAB
1974).

Ser. No. 75/762,329
6
percentage of the total number of listings in that
database, we find that it nonetheless represents a not
insubstantial or de minimis number of households of persons
bearing this surname. See In re Etablissements Darty et
Fils, supra, 225 USPQ at 653 (“Nor can the interests of
those having the surname DARTY be discounted as de
minimis”). Additionally, the NEXIS evidence of record
shows that numerous articles, published in periodicals of
national circulation, have referred to many different
persons having the surname “Malan,” and thereby have
exposed the surname significance of the term to readers
around the country. See In re Rebo High Definition Studio
Inc., supra. Finally, the surname significance of “Malan”
is evidenced by the fact that there is an historical
personage bearing the surname “Malan”, i.e., Daniel
Francois Malan, who is of sufficient notoriety that
biographical references to him appear in three different
standard reference works.
Thus, on this record, we find that “Malan” is not so
rare a surname as to preclude a finding that its primary
significance to the purchasing public is, in fact, that of
a surname. See also In re Etablissements Darty et Fils,
supra, 225 USPQ at 653 (“Thus, as a surname, DARTY is not
so unusual that such significance would not be recognized
Ser. No. 75/762,329
7
by a substantial number of persons”). In any event, even a
rare surname is unregistrable under Section 2(e)(4) if it
can be concluded from the evidence of record that the
surname significance of the term is its primary
significance to the purchasing public. See In re
Etablissements Darty et Fils, supra; In re Rebo High
Definition Studio Inc., supra; and Societe Civile Des
Domaines Dourthe Freres v. S.A. Consortium Vinicole De
Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1209 (TTAB 1988).
In this case, there is no evidence that “malan” has
any recognizable non-surname meaning or significance, much
less any non-surname significance which would be the term’s
primary significance to the purchasing public. There is no
dictionary or other evidence which discloses a non-surname
meaning for “malan,” and applicant has conceded that the
term has no non-surname meaning or significance in English.
(See Applicant’s May 15, 2000 Response to Office Action.)
However, applicant asserts (without submitting any
corroborative evidence) that Chinese-speaking members of
the purchasing public are aware that “malan” is not a
Chinese surname, but rather is a transliteration of two
Chinese-language ideogram characters which translate, in
English, to the arbitrary and fanciful term “horse staple.”
Applicant also asserts that, in its advertisements and
Ser. No. 75/762,329
8
signage, etc., applicant always uses “malan” in conjunction
with those Chinese ideogram characters.
Even assuming arguendo that applicant’s unsupported
assertions are accurate, we are not persuaded that the
primary significance of “malan” to the purchasing public
would be “horse staple,” rather than its surname
significance. The fact that it is not a Chinese surname is
not dispositive. There is no evidence from which we might
conclude that non-Chinese-speaking persons in the United
States, who must be presumed to make up a substantial
portion of the relevant purchasing public for the recited
services, would understand or know that “malan” means
“horse staple.” Nor is there any basis in the record for
concluding that such purchasers would understand the
meaning or significance of the Chinese ideogram characters
(which, in any event, are not included in the drawing of
the mark applicant seeks to register). On this record, we
find that “malan” has no recognizable non-surname
significance.
Finally, we are not persuaded by applicant’s argument
that the mark will not be viewed as a surname because it is
a special form mark depicted in all lower-case letters
rather than, as is usual for a surname, a capital letter
followed by lower-case letters. This minimal degree of
Ser. No. 75/762,329
9
stylization does not suffice to change the commercial
impression of the mark from that of a surname to that of a
service mark. See In re The Directional Marketing
Corporation, 204 USPQ 675 (TTAB 1979)(mark’s significance
as primarily merely a surname not negated by its depiction
in all lower-case letters). Furthermore, we find that
there is nothing about the term itself which, when it is
used in connection with the recited services, detracts from
its surname significance. Compare In re Sava Research
Corp., 32 USPQ2d 1380 (TTAB 1994)(SAVA, for secure
communications systems, has “the look and sound” of an
acronym, not a surname); In re BDH Two Inc., 26 USPQ2d 1556
(TTAB 1993)(GRAINGERS, for crackers and snack chips made
from grain, more likely to be perceived as suggestive of
the grain-based nature of the goods than as a surname).
In summary, in view of the evidence of record which
clearly establishes the surname significance of “malan,”
i.e., the PHONEDISC listings, the NEXIS articles, and the
dictionary and encyclopedia biographical entries, and in
view of the absence of any evidence showing that “malan”
has any recognizable non-surname significance to the
purchasing public, we find that the Trademark Examining
Attorney has made out a prima facie case that the primary
significance of “malan” to the purchasing public is that of
Ser. No. 75/762,329
10
a surname. We also find that applicant has failed to rebut
that prima facie showing. Although “malan” is not the
surname of anyone associated with applicant, and perhaps is
not the most common of surnames, we cannot conclude on this
record that the surname is so rare, or that the mark looks
and sounds so unlike a surname, that its clearly-
established surname significance is not also its primary
significance to the purchasing public.
Decision: The refusal to register under Trademark Act
Section 2(e)(4) is affirmed.