Gibson Piano Ventures, Inc.

Trademark Trial and Appeal Board

Nov 18, 2004

No. 76402813 (T.T.A.B. Nov. 18, 2004)

11/18/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Gibson Piano Ventures, Inc.
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Serial No. 76402813
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Lucian Wayne Beavers of Waddey & Patterson for Gibson Piano
Ventures, Inc.
John S. Yard, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
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Before Hanak, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Gibson Piano Ventures, Inc. (applicant) seeks to
register in typed drawing form LINDEMAN & SONS for pianos.
The intent-to-use application was filed on May 1, 2002.
Citing Trademark Act Section 2(e)(4), the Examining
Attorney refused registration on the basis that applicant’s
mark is primarily merely a surname. When the refusal to
register was made final, applicant appealed to this Board.
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Ser. No. 76402813
2
Applicant and the Examining Attorney filed briefs.
Applicant did not request an oral hearing.
To begin with, we note that there is no dispute that
LINDEMAN is a surname, and applicant does not contend to
the contrary. In this regard, reference is made to page 4
of applicant’s brief where applicant states that “the
combined mark LINDEMAN & SONS is not ‘primarily merely’ a
surname. Instead, it is a combination of a surname and an
additional term.” (original emphasis).
However, it is the contention of applicant that
LINDEMAN & SONS is not primarily merely a surname for two
reasons. First, applicant contends that LINDEMAN per se is
a rare surname. Second, applicant contends that in any
event, when combined with the additional wording & SONS,
the combined mark (LINDEMAN & SONS) is not primarily merely
a surname.
Before considering whether LINDEMAN is a rare surname,
we note at the outset that “the degree of a surname’s
rareness” is but one factor in determining whether LINDEMAN
per se is primarily merely a surname. In re Benthin
Management, 37 USPQ2d 1332, 1333 (TTAB 1995). See also In
re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994).
In Benthin, the evidence demonstrated that there were just
over 100 residential telephone directory listings for
Ser. No. 76402813
3
individuals whose surname was BENTHIN. In contrast, the
Examining Attorney has demonstrated by making of record the
pertinent pages from the PowerFinder (2001) nationwide
telephone directory that there are over 2,000 residential
telephone listings for individuals whose surname is
LINDEMAN. Hence, we find that LINDEMAN is not a rare
surname in the United States.
However, as previously noted, the degree of a
surname’s rareness is not the only factor in determining
whether a surname is primarily merely a surname. Another
factor is whether the surname has any “recognized meaning
other than that of a surname.” Benthin, 37 USPQ2d at 1333.
See also In re BDH Two Inc., 26 USPQ2d 1556, 1558 (TTAB
1993). In this case, the Examining Attorney stated during
the examination process that he consulted numerous
dictionaries and can find no listing for “lindeman.”
Moreover, applicant has not contended that the surname
LINDEMAN has any meaning other than as a surname. Thus,
this factor favors a finding that LINDEMAN would be
perceived as primarily merely a surname.
Finally, a key factor in determining whether LINDEMAN
would be perceived as primarily merely a surname is whether
LINDEMAN has “the structure and pronunciation” of a
surname, or stated somewhat differently, the “look and
Ser. No. 76402813
4
sound” of a surname. Benthin, 37 USPQ2d at 1333. See also
In re Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988).
While we recognize that this is a rather subjective
determination, it is out belief that LINDEMAN clearly has
the look and sound of a surname.
In sum, taking into account all of the pertinent
factors, we find that the LINDEMAN portion of applicant’s
mark is most decidedly primarily merely a surname. Thus,
the only issue left is whether the addition of & SONS to
LINDEMAN results in a combination which is not primarily
merely a surname.
The leading case concerning whether the addition to a
surname of words (or abbreviations) indicating the business
structure of applicant results in a composite mark which is
not primarily merely a surname is In re I. Lewis Cigar Mfg.
Co., 205 F.2d 204, 98 USPQ 265 (CCPA 1953). There a
predecessor Court to our primary reviewing Court held that
the “mark” S. SEIDENBERG & CO’S for cigars was primarily
merely a surname despite the fact that the “mark” in its
entirety concluded with the wording & CO’S. The wording &
CO’S like the wording & SONS merely indicates the legal
nature of the business, and does not convert either
SEIDENBERG or LINDEMAN into something other than primarily
merely surname. Indeed, the present “mark” LINDEMAN &
Ser. No. 76402813
5
SONS, if anything, is more likely to retain its status as
primarily merely a surname. In the Lewis Cigar case the
mark in question featured additional verbiage, namely, the
letter “S” preceding the “mark” S. SEIDENBERG & CO’S. Here,
there is no initial or other wording proceeding LINDEMAN &
SONS.
More recently, our primary reviewing Court held that
DARTY was primarily merely a surname. In so doing, the
Court noted that DARTY “is used in the company name in a
manner which reveals its surname significance, at least to
those with a modicum of familiarity with the French
language (Darty et Fils translates as Darty and Son).” In
re Etablissments Darty et Fils, 759 F.2d 15, 225 USPQ 652,
653 (Fed. Cir. 1985).
In short, we find that the addition of & SONS to the
surname LINDEMAN does not result in a “mark” (LINDEMAN &
SONS) which is other than primarily merely a surname.
Finally, applicant argues at pages 4 and 5 of its
brief that it is a “common practice within the piano
industry” of adding the words & SONS to a surname such that
consumers do not view the resulting combination as
primarily merely a surname. Applicant cites five
registrations for pianos which conclude with the words &
SONS.
Ser. No. 76402813
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As the Examining Attorney correctly notes, applicant’s
argument is misplaced. One of the registered marks
consists of a given name and a surname followed by the
words & SONS. Another registration was obtained pursuant
to the provisions of Section 2(f) where the applicant
demonstrated that the mark in its entirety had acquired a
secondary meaning such that it was no longer primarily
merely a surname. A third registration has been abandoned.
Finally, the Examining Attorney noted that he was not privy
as to the examination process that resulted in the
registration of the other two marks containing a surname
followed by the words & SONS.
The Examining Attorney’s position is well taken. We
would only add that this Board is certainly not bound by
the actions of Examining Attorneys in allowing marks to be
registered. West Florida Seafood v. Jet Restaurants, 31
F.3d 1122, 31 USPQ2d 1660, 1664 (Fed. Cir. 1994).
Decision: The refusal to register is affirmed.