Grand & Piano Parts Distribution B.V.

Trademark Trial and Appeal Board

Mar 31, 2015

No. 85946217 (T.T.A.B. Mar. 31, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 31, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Grand & Piano Parts Distribution B.V.
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Serial No. 85946217
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Cheryl L. Burbach of Hovey Williams LLP,
for Grand & Piano Parts Distribution B.V.
Gilbert M. Swift, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
_____

Before Quinn, Taylor and Shaw,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Grand & Piano Parts Distribution B.V. (“Applicant”) seeks registration on the
Principal Register of the mark BOLAN (in standard characters) for
Apparatus for recording, transmitting, editing and
reproduction of sound featuring piano sounds, silent
systems for pianos; components for digital audio systems,
namely, hygrometers, headphones, power supplies with
cables, electronic piano key sensors, electronic piano pedal
sensors, electronic control panels for silent piano systems,
piano mute rail installations in the nature of dampers for
pianos; amplifiers, speakers in International Class 9;

Serial No. 85946217
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Musical instruments, especially pianos, grand pianos,
digital pianos; piano chords, namely piano strings, piano
keys, dampers for pianos, piano hammerheads, piano
tuners, musical instrument tuning apparatus, namely,
tuning hammers; pianos and piano structural parts In
International Class 15;
Piano benches in International Class 20;
Business management featuring procurement, namely,
purchasing silent systems for pianos, musical
instruments, pianos, grand pianos, digital pianos, piano
benches, piano chords, piano keys, dampers for pianos,
hammerheads, piano action, piano tuners, head phones,
control units for silent systems, all of the above for others
in International Class 35; and
Repair and maintenance of grand pianos and pianos;
installing of silent systems for pianos in International
Class 37.1
The Trademark Examining Attorney has finally refused registration of Applicant’s
mark under Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4), on the
ground that the mark is primarily merely a surname. Registration was also finally
refused as to “speakers” identified in International Class 9 on the basis of Applicant’s
failure to satisfy the Examining Attorney’s requirement for a definite identification of
goods solely with respect to that term.
Applicant appealed to this Board, and both Applicant and the Examining
Attorney filed briefs. We affirm in part and reverse in part.
Is Bolan Recognized as Being Primarily Merely a Surname?

1 Application Serial No. 85946217 was filed on May 30, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, and priority based on Section 44(d) of the Trademark Act, on the basis of
European Community Registration No. 011853728, filed May 29, 2013.
Serial No. 85946217
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A term is primarily merely a surname if, when viewed in relation to the goods
or services for which registration is sought, its primary significance to the
purchasing public is that of a surname. See In re United Distillers plc, 56 USPQ2d
1220 (TTAB 2000). The burden is on the Examining Attorney to establish a prima
facie case that a term is primarily merely a surname. In re Etablissements Darty et
Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985). If the Examining Attorney
makes that showing, then we must weigh all of the 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 the
applicant.” In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995).
In Benthin Management, the Board identified five factors to be considered in
determining whether a mark is primarily merely a surname: (1) the degree of the
surname’s rareness; (2) whether anyone connected with the Applicant has the
surname; (3) whether the mark has any recognized meaning other than as a
surname; (4) whether the mark has the “look and feel” of a surname; and (5)
whether the mark is presented in a stylized form distinctive enough to create a
separate non-surname impression. Because Applicant seeks to register BOLAN in
standard character form, the fifth Benthin factor is not relevant in this case and we
consider the record in light of the first four factors.
(1) The degree of the surname’s “rareness
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We turn to the first Benthin factor, which is the degree of the surname’s
rareness. Arguing that BOLAN is not a rare surname, the Examining Attorney,
during prosecution of the application, made of record a portion of a “Public Records:
Surname” search from the LexisNexis Public Record Database, showing the applied-
for mark appearing 455 times as a surname in a nationwide telephone directory of
names. The Examining Attorney points out that the listing identifies use of the
surname BOLAN in geographically diverse areas comprising 43 of the 50 states as
well as the District of Columbia. We recognize that there likely are duplicates
among the listings given the instances where the same name is associated with the
same address or city. However, the duplication does not appear to be substantial.
The Examining Attorney also made of record webpages from the search “Surnames
> Bolan data base showing use of BOLAN as a surname as well as a “Message
Boards > Surnames > Bolan” page.2 We find this evidence has somewhat limited
probative value because many of the references are to individuals who we presume
by their birth dates are long dead, leading us to question whether this information
accurately reflects the current perception of “Bolan” in the United States. In
addition, many of the references are responses to ancestor inquiries and merely
duplicate the name of the same individuals and, with further regard to the
requesting party, appear to duplicate some of the names listed in the LexisNexis
database.

2 http://boards.ancestr.com/searchResults.aspx?db=mb&gss=ancMB&rank=0&adv=&p=
surnames.Bolan&cst=board&gskw=&psrch=on&, attachment to final Office action dated
April 2, 2014.

Serial No. 85946217
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The Examining Attorney also points to excerpted materials retrieved from
the Internet showing use of BOLAN as a surname in various circumstances and
across the United States,3 and maintains that this evidence demonstrates
“[geographically] broad exposure of the name BOLAN to the public through routine
appearances in the news media.” The examples include: the websites discussing
four lawyers (one reference is to a maiden name), a library consultant, two
university faculty members, an investment professional and a member of the band
Skid Row; and an excerpt from IMDb (Internet Movie Database) discussing a film
animator. These few examples do not convince us of the public significance of
BOLAN as a surname principally because the subjects of the excerpts are not
prominent personages. That is, while the individuals may reside in diverse
geographical locations, there is no showing that they are the subject of wide media
attention or publicity to the extent that the public perception of the term is affected,
even in their distinct geographical locations. But see In re Gregory, 70 USPQ2d 1792
(TTAB 2004) (ROGAN primarily merely a surname based in part on broad exposure
of public to politician, athletes, actor and author with that surname).
Accordingly, we base our finding of the degree of the surname’s rareness on
the 455 listings for the name BOLAN from the LexisNexis data base. While we
recognize that there is no minimum number of listings needed to prove that a mark
is primarily merely a surname, we conclude, on this record, that BOLAN is an
extremely rare surname. See e.g., In re Joint-Stock Co. “Baik”, 84 USPQ2d 1921

3 Attachments to the final Office action dated April 2, 2014.
Serial No. 85946217
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(TTAB 2007) (The Board determined Baik to be an extremely rare surname with
only 456 individuals with that name); In re Giger, 78 USPQ2d 1405 (TTAB 2006)
(The Board determined “Giger” was not a common surname since there were only
545 listings for the name).
(2) Whether the mark is a surname of anyone connected with applicant
The second factor that we look to is whether anyone connected with the
Applicant has the mark as a surname. There is no evidence in this record of
anyone connected to Applicant with the surname BOLAN. We accordingly treat
this factor as neutral.
(3) Whether the mark has any recognized meaning other than as a
surname.

The third Benthin factor we consider is whether BOLAN has a recognized
meaning other than that of a surname. Evidence that a word has no meaning or
significance other than as a surname is relevant to determining whether the word
would be perceived as primarily merely a surname. In re Petrin Corp., 231 USPQ
902, 903 (TTAB 1986). In connection with this factor, the Examining Attorney has
submitted a single excerpt from Collins American English Dictionary4 showing that
the term “Bolan” has no identified meaning in this dictionary. The lack of an entry
for “Bolan” in a single dictionary is hardly conclusive of whether that term has any
non-surname meaning. Applicant argues that the reliance on negative dictionary
evidence is misplaced because it overlooks the fact that consumers “are likely” to

4 http://www.collinsdictionary.com/spellcheck/american/bolan?showCookiePolicy=true,
attached to the final Office action dated April 2, 2014.
Serial No. 85946217
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view BOLAN as a fanciful mark. This argument is unsupported and, with no
contradictory evidence having been produced by Applicant, we are constrained to
find that that this factor very slightly favors the Examining Attorney’s position.
(4) Whether the mark has the “look and feel” of a surname
Last, we consider the fourth Benthin factor, i.e., whether BOLAN has the “look
and feel” of a surname, the determination of which is concededly subjective in
nature. When a term does not have the look and feel of a surname, this factor
clearly favors the applicant. On the other hand, when it looks and feels like a
surname, such a finding merely tends to reinforce a conclusion that the term’s
primary significance is a surname. The Examining Attorney argues that BOLAN
has the structure of a surname, because there are numerous individuals with the
surname, it does not have any non-surname significance, and it is similar in
appearance to other surnames on the genealogy website, Ancestry.com. In support
of his third contention, the Examining Attorney points to evidence from
Ancestry.com5 showing a reference to the surname “Boland.” A review of this
evidence shows only a single reference to the name “Boland,” and a single reference
to each of the names “Boling,” “Bolin” and “Boylan,” the final three names being less
similar in structure to “Bolan.” Applicant, on the hand, argues that there is no
evidence that BOLAN has the structure and pronunciation of a surname. While we
agree that there are at least 455 individuals with the “Bolan” surname, as

5 http://boards.ancestr.com/searchResults.aspx?db=mb&gss=ancMB&rank=0&adv=&p=
surnames.Bolan&cst=board&gskw=&psrch=on&, attachment to final Office action dated
April 2, 2014.

Serial No. 85946217
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discussed, that surname is extremely rare and, thus, we cannot say that there has
been sufficient public exposure to lend to it the “look and feel” of a surname. Nor is
the lack of non-name significance convincing. Based on the dearth of evidence,
combined with the subjective nature of this factor, we are unable to make a
definitive determination that Applicant’s mark has the “look and feel” of a surname.
Instead, we find that while some may perceive BOLAN as surname, it is as likely
that others may perceive it as an arbitrary indicator of the source of Applicant’s
goods and services.
After weighing all of the elements in the Benthin test, and keeping in mind that
we must resolve any doubt as to whether the mark is primarily merely a surname
in Applicant’s favor, see In re Joint-Stock Co. “Baik”, 84 USPQ2d at 1922; Benthin
Management, 37 USPQ2d at 1334, we find, largely due to its rareness, that BOLAN
is not primarily merely a surname.
Requirement for a More Definite Identification
We turn then to the Examining Attorney’s final requirement for an acceptable
identification of goods. By way of background, the Examining Attorney, in his initial
Office action, found indefinite the recitations of goods and services in International
Classes 9, 15 and 35.6 As amended, the Class 9 identification reads as follows
(emphasis added):
Apparatus for recording, transmitting, editing and
reproduction of sound featuring piano sounds, silent

6 Applicant, in its response to the first Office action satisfied the requirement with regard
to Classes 9 (other than as to the term “speakers”), 15 and 37.
Serial No. 85946217
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systems for pianos; components for digital audio systems,
namely, hygrometers, headphones, power supplies with
cables, electronic piano key sensors, electronic piano pedal
sensors, electronic control panels for silent piano systems,
piano mute rail installations in the nature of dampers for
pianos; amplifiers, speakers
The Examining Attorney indicated in his final Office Action that the word
“speakers” in the amended identification of the Class 9 goods remained indefinite,
and specifically stated (emphasis in original): “The wording ‘speakers’ in the
identification of goods for International Class 009 remains indefinite and needs
clarification to specify the goods by common commercial name, e.g. ‘audio speakers,
bass speakers, loudspeakers.’” 7
An applicant must identify the goods specifically to provide public notice and to
enable the United States Patent and Trademark Office (“USPTO”) to classify the
goods properly and to reach informed judgments concerning likelihood of confusion
under 15 U.S.C. § 1052(d). The identification of goods must be specific, definite,
clear, accurate, and concise. See In re Societe Generale des Eaux Minerales de Vittel
S.A., 1 USPQ2d 1296 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d
1450 (Fed. Cir. 1987); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175
USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722
(C.C.P.A. 1974).
We agree with the Examining Attorney that the current language does not
clearly identify Applicant’s speakers. The problem is that speakers fall into multiple

7 We note that the Examining Attorney expressly limited its requirement to the term
“speakers” and, accordingly, the requirement pertains to only that particular good within
the Class 9 recitation. See generally Section 1402.13 of the Trademark Manual of
Examining Procedure (2015).
Serial No. 85946217
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categories, and Applicant’s failure to specify the particular type (or types) of
speakers in connection with which the mark is used fails to provide adequate public
notice or to allow the USPTO to reach informed decisions concerning likelihood of
confusion. Accordingly, the refusal to register “speakers” based on Applicant’s
failure to clarify the type of speakers is affirmed. Notably, Applicant did not address
this requirement in its brief.
Decision: The refusal to register Applicant’s mark BOLAN under Section 2(e)(4)
of the Trademark Act is reversed. The requirement for a more definite identification
to clarify the word “speakers” in International Class 9 goods is affirmed and
registration to Applicant is refused solely as to “speakers.”