IMSA-MEX, S.A. DE CV

Trademark Trial and Appeal Board

Mar 22, 2007

No. 78464418 (T.T.A.B. Mar. 22, 2007)

Mailed:
March 22, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re IMSA-MEX, S.A. DE C.V.
________

Serial No. 78464418
_______

John S. Egbert of Egbert Law offices for IMSA-MEX, S.A. DE
C.V.

Linda E. Blohm, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Holtzman, Walsh and Cataldo, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

On August 9, 2004, IMSA-MEX, S.A. DE C.V. (applicant)
filed an application to register the mark PINTRO on the
Principal Register in standard-character form for:
Building materials of metal, namely, metal building
panels, metal roofing, metal roofing tiles, metal
decking, metal ceiling panels, metal floor tiles,
metal door and window frames and casings, metal boards
for flooring, metal girders and joists; metal load
bearing constructions, namely, framework of metal for
buildings, reinforcing materials of metal for
buildings, building boards of metal, building panels
of metal, building linings of metal, and building wall
cladding of metal; steel, unwrought and partly wrought
common metals and their alloys and steels in the form
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78464418
2
of strips, hoops, coils, sheets, tubes and plates;
rolled steel sheets, coated steel sheets, aluminized
steel sheets, and galvanized steel sheets, in
International Class 6.

Applicant asserts a bona fide intention to use the mark in
commerce as its basis for registration.
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). Applicant responded; the examining attorney
issued a final refusal; and applicant appealed. Applicant
and the examining attorney have filed briefs.
We reverse.
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 § 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. 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. Id. If the examining
attorney makes that showing, then we must weigh all of the
evidence to determine ultimately whether the mark is
Ser No. 78464418
3
primarily merely a surname. In re Sava Research Corp., 32
USPQ2d 1380, 1381 (TTAB 1994). If there is any doubt, we
must resolve the doubt in favor of applicant. In re
Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995).
In Benthin, the Board identified five factors, four of
which are relevant here, to consider in determining whether
a mark is primarily merely a surname: (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 feel” of a surname. Id.
at 1332-33. Because PINTRO is in standard-character form,
we need not consider the fifth factor here, that is,
whether the display might negate any surname significance.
“Rareness” – With the first action, the examining
attorney provided a listing of 24 individuals with “Pintro”
as a surname from a search of the Lexis/Nexis® USFind® data
base. In that action, the examining attorney states that
PINTRO, “… appears to be a relatively rare surname.”
Examining Attorney’s First Action at 2. In that action the
examining attorney also indicated that she failed to find
PINTRO in the American Heritage Dictionary of the English
Language. Id. The examining attorney presented no further
evidence with regard to the significance of PINTRO.
Ser No. 78464418
4
On this record, we conclude that “Pintro” is an
extremely rare surname. In concluding so, we rely on the
fact that only 24 examples of the Pintro surname were
located from a comprehensive directory of the entire United
States. In re Sava Research Corp., supra at 1381; In re
Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987). In fact, as
applicant notes, at least fifteen of the 24 entries are
concentrated in the New York State, or even in the New York
City metropolitan area. Cf. In re United Distillers plc,
56 USPQ2d 1220, 1221 (TTAB 2000); In re Picone, 221 USPQ
93, 94 (TTAB 1984). Therefore, we conclude that Pintro is
an extremely rare surname.
Applicant’s Surname Use – Applicant has represented
that no one connected with it has the Pintro surname. This
point is not in dispute.
Other Meanings – The Examining Attorney argues that
PINTRO has no meaning other than as a surname and offers
the referenced dictionary evidence in support of this
position. Applicant, on the other hand, argues that PINTRO
is a coined term derived from two Spanish terms: “pintor”
meaning “painter” and “pinto” meaning “piebald” or “having
many colors.”
The Examining Attorney notes that applicant has not
provided any definitions to support this assertion. We
Ser No. 78464418
5
accept applicant’s representation that PINTRO is a coined
term at face value without regard to the assertions
regarding the derivation. We question whether U.S.
purchasers would recognize that the mark is derived from
these Spanish terms, and consequently we have not relied on
these assertions in reaching our conclusions in this case.
This is unlike cases where the mark is a recognized foreign
term, rather than a coined term derived from allegedly
recognized foreign terms. Cf. In re Picone, 221 USPQ at
94; In re Carl Braun, Camerawerk, 124 USPQ 184, 185 (TTAB
1960).
On the same basis we reject applicant’s further
argument that potential purchasers would perceive the mark
as suggestive in view of applicant’s further assertion that
the identified products are prepainted. We find the
connections between the foreign terms and the goods too
tenuous under these circumstances to conclude that the mark
would be perceived as suggestive.
As to the perceived meaning of PINTRO, lastly we note
the absence of any evidence that any person with the Pintro
surname has achieved any notoriety. That sort of evidence
may indicate that the public would be more likely to
perceive PINTRO as a surname. Cf. In re Gregory, 70
USPQ2d 1792, 1795 (TTAB 2004) (evidence of public figures
Ser No. 78464418
6
with Rogan surname found relevant to public perception).
“Look and Feel” – Lastly we must consider whether
PINTRO has the “look and feel” of a surname, a critical
factor in this case. As to this factor, the examining
attorney argues that PINTRO has the look and feel of a
surname stating, “Many surnames end with the letter ’O’,
for example, Amato, Bruno, Castro, DeMarco, Gallo, Romano.
CASTRO even ends with the same last three letters as
PINTRO.” Examining Attorney’s Brief at 5. Applicant
disagrees.
We reject the examining attorney’s argument that the
mere fact that the mark ends in “O” imbues the mark with
the look and feel of a surname. In fact, the only example
the examining attorney offers with a common letter string
of three letters is Castro. We also find this
unpersuasive. We see no shared “pattern” such that the
public would assume that PINTRO is a surname.
In the case of a very rare surname, we cannot assume
that the purchasing public will recognize the mark as a
surname based on exposure to the surname use. In re Garan
Inc., supra at 1540. It is in the case of a rare surname
that we need to weigh “look and feel” carefully,
particularly where there is no “cue,” such as a title, an
initial or possessive form to signal that the term is a
Ser No. 78464418
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surname. See, e.g., In re Nelson Souto Major Piquet, 5
USPQ2d 1367, 1368 (TTAB 1987). For example, certain
surnames, though rare, resemble common surnames “in their
structure and pronunciation.” In In re Industrie Pirelli
Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988). We
see no evidence that such is the case with PINTRO. Cf. In
re United Distillers plc, supra at 1221. In this case,
there is no evidence that relevant purchasers would be
“preconditioned” to perceive PINTRO as a surname as with
“Pirelli.” In re Garan Inc., supra at 1540. Accordingly
we find that PINTRO does not have the look and feel of a
surname.
In sum, based on the record in this case, we conclude
that the examining attorney has failed to meet the burden
of establishing a prima facie case that PINTRO is primarily
merely a surname. Accordingly, we conclude that PINTRO is
not primarily merely a surname. Furthermore, at a minimum
this record raises serious doubts as to the primary surname
significance of PINTRO, and we must resolve any doubt in
favor of applicant. 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.