Indian Industries, Inc.

Trademark Trial and Appeal Board

Sep 22, 2004

No. 76481665 (T.T.A.B. Sep. 22, 2004)

Mailed:
September 22, 2004
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Indian Industries, Inc.
________
Serial No. 76481665
_______
Charles J. Meyer of Woodard Emhardt Moriarty McNett & Henry
LLP for Indian Industries, Inc.
Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______
Before Quinn, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Indian Industries, Inc. seeks registration on the
Principal Register of the mark MOSCONI for goods identified
in the application, as amended, as “billiards, namely,
billiard tables, billiard cues, billiard balls, billiard
chalk, eight and nine ball racks, cue racks, cue cases and
billiards game playing equipment,” in International Class
28.1
1 Application Serial No. 76481665 was filed on January 13, 2003
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76481665
- 2 -
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon the ground that
applicant’s mark is primarily merely a surname under Section
2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4).
When the refusal to register was made final, applicant
appealed. Applicant and the Trademark Examining Attorney
have filed briefs. An oral hearing was not requested.
We reverse the refusal to register.
In support of the surname refusal, the Trademark
Examining Attorney has made of record the following: the
results of a search of the LEXIS/NEXIS® USFIND Person
Locator database, finding 181 listings of the “Mosconi”
surname, as well as relevant excerpts from The American
Heritage Dictionary of the English Language, the Cambridge
Dictionary of American English and the Encarta World English
Dictionary, none of which showed any entries for the word
“Mosconi.”
Applicant argues that the Trademark Examining Attorney
has failed to establish a prima facie surname case.
Applicant challenges the Trademark Examining Attorney’s
LEXIS/NEXIS® database evidence on the ground that the
quantum of evidence submitted by the Trademark Examining
Serial No. 76481665
- 3 -
Attorney is indeterminate of the primary significance of the
term to purchasers. While applicant concedes that MOSCONI
may well be an extremely rare surname in the United States,
applicant argues that the evidence it has placed into the
record shows that the public for billiards equipment
immediately associates the term MOSCONI with the late Willie
Mosconi, a world champion fifteen times between 1941 and
1957, and who, to this day, likely remains the most famous
pocket billiards player of all time.
The Trademark Examining Attorney concedes that Willie
Mosconi may rise to the level of a “semi-historical figure”
known to a substantial minority of billiards aficionados,
but that this fact does not take away from the fact that
under Lanham Act precedent, this term is still deemed to be
primarily merely a surname.
Whether a mark is primarily merely a surname depends
upon whether its primary significance to the purchasing
public is that of a surname. In re Hutchinson Technology,
Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988). The
Office, through the Trademark Examining Attorney, bears the
burden of establishing 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 (Fed. Cir. 1985), aff’g, 222
Serial No. 76481665
- 4 -
USPQ 260 (TTAB 1984). 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. In re Harris-Intertype Corp., 518 F.2d 629, 186
USPQ 238, 239-40 (CCPA 1975). Whether a term sought to be
registered is primarily merely a surname within the meaning
of Section 2(e)(4) of the Trademark Act can only be resolved
on a case by case basis, taking into account a number of
factual considerations. In re Benthin Management GmbH, 37
USPQ2d 1332 (TTAB 1995).
There are five factors to be considered in the
analysis:
(1) Is the word a common or rarely used
surname?
(2) Does anyone connected with the applicant
have that surname?
(3) Does the word have meaning other than as
a surname?
(4) Does the word look and sound like a
surname?
(5) Is the word presented in use in a
stylized form distinctive enough to
create a separate non-surname
impression?
In re Benthin Management GmbH at 1333-34 [Trademark
Examining Attorney’s refusal to register BENTHIN reversed,
because it was a rare surname, did not look and sound like a
surname, and was set forth in a highly stylized oval
design].
Serial No. 76481665
- 5 -
In this case, there is no stylization or design
involved; applicant seeks merely to register MOSCONI in
typed form. Accordingly, the degree of stylization is not a
factor in this case.
The first factor to be considered is the degree of a
surname’s rareness. In re Garan Inc., 3 USPQ2d 1537, 1540
(TTAB 1987). As indicated above, the Trademark Examining
Attorney and applicant seem to agree that MOSCONI is a rare
surname, and we find it to be so. However, rarity in a
surname is not determinative in concluding whether or not an
admitted surname is “primarily merely a surname” within the
contemplation of Section 2(e)(4) of the Trademark Act. In
re Etablissements Darty et Fils, supra; In re Rebo High
Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990); Societe
Civile Des Domaines Dourthe Freres v. SA Consortium Vinicole
De Bordeaux et De La Gironde, 6 USPQ2d 1205 (TTAB 1988); and
In re Luis Caballero, S.A., 223 USPQ 355 (TTAB 1984).
Accordingly, we proceed to look at the other relevant
factors.
As to the second factor, the document entitled
“Assignment of Trademarks and Rights of Publicity” that
accompanied the original application papers was signed by
Gloria Mosconi, the widow of the late Willie Mosconi. In
Serial No. 76481665
- 6 -
light of this document, the Trademark Examining Attorney
argues that “[a]ccordingly, the proposed mark is the surname
of both the person assigning rights in the mark to the
applicant and of the person after whom the applicant’s goods
are named.” (Trademark Examining Attorney’s appeal brief,
p. 4).
We consider next the decidedly subjective factor of
whether MOSCONI has the structure and pronunciation of a
surname, that is, whether the term has the look and sound of
a surname. In re Industrie Pirelli, 9 USPQ2d 1564, 1566
(TTAB 1988), aff’d unpub’d, 883 F.2d 1026 (Fed. Cir. 1989).
We conclude that MOSCONI indeed does have the look and feel
of an Italian heritage surname.
Hence, three of the four relevant factors herein
(factors one, two and four) clearly support the Trademark
Examining Attorney’s prima facie case under Section 2(e)(4).
We turn then to the critical third factor, where
applicant and the Trademark Examining Attorney obviously
differ in their estimation of whether the term MOSCONI has
significance to the relevant purchasers for anything other
than as a surname. The Trademark Examining Attorney relies
upon the absence of the word MOSCONI from the listings of
three different online dictionaries to conclude that the
Serial No. 76481665
- 7 -
word has no meaning other than as a surname. In spite of
applicant’s arguments to the contrary, we find that the term
MOSCONI, per se, will be viewed by most members of the
public in the United States as primarily merely a surname.
However, we also agree with applicant that, in this
case, such a sweeping conclusion is not the end of the
inquiry. The gravamen of applicant’s argument against our
finding that the term MOSCONI is primarily merely a surname
is its own showing that Willie Mosconi was of such
historical significance in the field of billiards that
MOSCONI should not be refused registration under Section
2(e)(4) of the Lanham Act. Applicant argues that this case
is analogous to a prior Board decision finding that an
applicant was entitled to registration of the mark SOUSA for
fireworks and entertainment services because potential
purchasers would associate patriotic events with an historic
figure well known in our history for his patriotic music.
In re Pyro-Spectaculars Inc., 63 USPQ2d 2022 (TTAB 2002).
In that case, the Board found that the Trademark Examining
Attorney had indeed made out a prima facie case that SOUSA
is primarily merely a surname, but that applicant had
successfully rebutted it with its own showing:
… present day recognition of John Philip
Sousa is not the only factor to be considered
Serial No. 76481665
- 8 -
in determining the primary significance of
the term SOUSA. Even more important under
the present circumstances is the specific
nature of applicant’s goods and services and
the significance of the term SOUSA when used
therewith. Applicant intends to use the term
SOUSA in connection with fireworks and with
shows featuring pyrotechnics. Clearly these
are goods and services which would be
associated by potential purchasers with
patriotic events such as the Fourth of July,
patriotic figures, and patriotic music.
Thus, we agree with applicant that when the
relevant purchasing public encounters the
term SOUSA, as it is intended to be used in
connection with applicant’s fireworks and
fireworks displays, the immediate association
of the term SOUSA will be with the famous
“March King,” John Philip Sousa. The primary
significance of the term SOUSA, as used in
connection with these goods and services, is
as the name of a specific person well known
in American history for his patriotic music.
Although “Sousa” may also be a surname in
current use in the United States, any such
connotation of the term would clearly be
secondary in significance when consideration
is given to the particular nature of
applicant’s goods and services.
Accordingly, we find that applicant has
adequately rebutted the prima facie case
established by the Examining Attorney that
SOUSA is primarily merely a surname. We find
the evidence demonstrates that SOUSA would be
viewed by the relevant purchasing public as a
reference to John Philip Sousa when used in
connection with applicant’s goods and
services.
In re Pyro-Spectaculars Inc., 63 USPQ2d at 2024.
Similarly, while the Trademark Examining Attorney
herein has successfully made out a prima facie case for
Serial No. 76481665
- 9 -
MOSCONI being primarily merely a surname, we find that the
present applicant has successfully rebutted this case with
its showing. The record is replete with references to the
legendary Willie Mosconi as being so famous at billiards
during the last fifty years of his life that his name is
synonymous with the game. In a survey of members of the
relevant purchasing public,2 at least 21% of the respondents
associated Willie Mosconi with the game of pool.3 It is this
showing that demonstrates that MOSCONI would be viewed by
the relevant purchasing public as a reference to Willie
Mosconi when used in connection with applicant’s goods.
This effectively rebuts the prima facie showing made by the
Trademark Examining Attorney herein.
In conclusion, we find that MOSCONI is a relative rare
surname, that individuals connected with applicant have this
surname, that the word MOSCONI looks and sounds like a
surname, and that for the public at large, the ordinary
meaning of the term MOSCONI is merely as a surname.
Nonetheless, we also find that this evidence is outweighed
2 Heads of households who were interested in sports, had
household incomes of $50,000 per year or higher, who had purchased
a pool table or intended to do so within the next five years,
conducted for Escalade Sports in September 2002.
3 Consistent with much of this record, we are using “billiards”
and “pool” as interchangeable terms.
Serial No. 76481665
- 10 -
by the strong association between the involved goods and the
late Willie Mosconi.
Decision: The refusal of registration under Section
2(e)(4), on the ground that MOSCONI, when used, will be
perceived as primarily merely a surname, is reversed.