Isabella Fiore, LLC

Trademark Trial and Appeal Board

Jul 13, 2005

No. 76445173 (T.T.A.B. Jul. 13, 2005)

Hearing: Mailed:
31 March 2005 13 July 2005
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Isabella Fiore, LLC
________

Serial No. 76445173
_______

Melissa A. Weiland, Esq. of Accessory Design Holdings,
Inc., for Isabella Fiore, LLC.1

Sonya B. Stevens, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).2
_______

Before Quinn, Walters, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 29, 2002, Isabella Fiore, LLC (applicant)
applied to register on the Principal Register the mark
FIORE, in standard character form, for:

1 On March 28, 2005, applicant’s original attorney Valerie du
Laney of Miller, Nash LLP, filed a Withdrawal of Attorney to
temporarily withdraw from the case to permit “applicant’s in-
house counsel, Melissa Weiland, to handle the appeal, including
the oral argument.” Ms. Weiland argued the appeal.
2 Dahlia George argued the appeal for the Office.
THIS DISPOSITION
IS CITABLE
AS PRECEDENT OF
THE TTAB
Ser No. 76445173
2
All purpose sport bags, all-purpose athletic bags,
animal carriers, animal harnesses, animal leashes,
athletic bags, attache cases, baby backpacks, baby
carriers worn on the body, backpacks, beach bags,
billfolds, book bags, boston bags, briefbags,
briefcases, briefcase-type portfolios, business card
cases, business cases, calling card cases, carry-on
bags, catalog cases, change purses, clothing for
animals, clutch bags, clutch purses, coin purses,
collars for pets bearing medical information, cosmetic
bags sold empty, cosmetic cases sold empty, credit
card cases, day packs, diaper bags, document cases,
dog apparel, drawstring pouches, duffel bags, fanny
packs, garment bags for travel, golf umbrellas, gym
bags, handbags, hat boxes for travel, key cases,
knapsacks, leashes for animals, leather shopping bags,
leggings for animals, lipstick holders, luggage,
luggage tags, mats and pads made of fabric for use
with animal training, name card cases, non-motorized,
collapsible luggage carts, overnight bags, overnight
cases, parasols, pet clothing, pocketbooks, purses,
satchels, school bags, shaving bags sold empty, shoe
bags for travel, shoulder bags, suit bags, suitcases,
toiletry cases sold empty, tote bags, train cases,
travel bags, bags, trunks, umbrellas, vanity cases
sold empty, waist packs, and wallets in International
Class 18.3

The examining attorney refused to register applicant’s
mark 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).
After the examining attorney made the refusal final,
applicant filed a notice of appeal. An oral hearing was
held on March 31, 2005.

3 Serial No. 76445173. The application is based on applicant’s
allegation of its bona fide intent to use the mark in commerce.
Ser No. 76445173
3
Section 2(e)(4) of the Trademark Act prohibits the
registration on the Principal Register of a mark that “is
primarily merely a surname.” In surname cases, we must
determine the impact the term has or would have on the
purchasing public because “it is that impact or impression
which should be evaluated in determining whether or not the
primary significance of a word when applied to a product is
a surname significance. If it is, and it is only that,
then it is primarily merely a surname.” In re Harris-
Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA
1975), quoting, Ex parte Rivera Watch Corp., 106 USPQ 145
(Comm’r 1955) (emphasis in original).
“Among the factors to be considered in determining
whether a term is primarily merely a surname are the
following: (i) whether the surname is rare; (ii) whether
anyone connected with applicant has the involved term as a
surname; (iii) whether the term has any other recognized
meaning; and (iv) whether the term has the ‘look and feel’
of a surname.” In re United Distillers plc, 56 USPQ2d
1220, 1221 (TTAB 2000).4

4 If the mark is depicted in stylized form, we would also
consider the stylization because if it is “distinctive enough,
this would cause the mark not to be perceived as primarily merely
a surname.” See In re Benthin Management GmbH, 37 USPQ2d 1332,
1334 (TTAB 1995). Inasmuch as applicant’s mark is displayed in a
typed or standard character drawing, this factor is not relevant.
Ser No. 76445173
4
Therefore, the first question we address is whether
the term “Fiore” is a rare surname. Applicant “does not
dispute that the word FIORE is a surname.” Response to
first Office action at 7. The examining attorney has
submitted the results of a NEXIS search of the Finder
database for the last name “Fiore.” The search returned
5,193 results. The examining attorney provided 500 of
these listings. Also, the examining attorney introduced 89
stories from a NEXIS publication database and ten Internet
stories showing that the term “Fiore” is used as a surname.
Viewing this evidence, we agree with the examining
attorney’s conclusion that FIORE is not a rare surname.
While there is no “magic” number of entries that an
examining attorney must present to demonstrate that a
surname is not rare, we must keep in mind that given “the
large number of different surnames in the United States,
even the most common surnames would represent but small
fractions of such a database.” In re Gregory, 70 USPQ2d
1792, 1795 (TTAB 2004). Here, more than 5000 phone book
listings from throughout the United States as well as the
NEXIS and Internet stories persuade us that FIORE is not a
rare surname in the United States. We add that, even if
the surname “Fiore” was rare, that fact, by itself, does
not indicate that the mark is not a surname within the
Ser No. 76445173
5
meaning of the Trademark Act. In re E. Martinoni Co., 189
USPQ 589, 590 (TTAB 1975) (“The fact that ‘MARTINONI’ may
be a rare surname does not entitle it to treatment
different from what would be accorded to a common surname
when no other meaning for the word is shown”).5
The second surname factor is whether anyone associated
with applicant is named “Fiore.” Applicant has maintained
throughout the prosecution that there “is no person
associated with the applicant who has the surname FIORE.”
Response to first Office action at 12. However, the fact
that “a proposed mark is not the applicant's surname, or
the surname of an officer or employee, does not tend to
establish one way or the other whether the proposed mark
would be perceived as a surname.” In re Gregory, 70 USPQ2d
1792, 1795 (TTAB 2004).6

5 As part of its response to the examining attorney’s evidence,
applicant in its brief introduced evidence from the Statistical
Abstract of the United States regarding the population of the
United States. The examining attorney objects to this evidence
as untimely. The population of the United States certainly seems
to be a fact “not subject to reasonable dispute in that it is …
capable of accurate and ready determination by resort to sources
whose accuracy cannot reasonably be questioned.” Fed. R. Evid.
201(b). See also TBMP § 704.12(a) (2d ed. rev. 2004).
Therefore, we take judicial notice of this fact and overrule this
objection.
6 We note that in the printouts of some of the applicant’s other
applications that have been made of record there is a statement
that “the name ‘Isabella Fiore’ does not identify a living
individual.” See Serial Nos. 76417432 and 76413395.
Ser No. 76445173
6
The third factor we address is whether there is
another recognized meaning of the term FIORE. The
examining attorney has submitted excerpts from ten English
language dictionaries showing that the word “Fiore” has no
identified meaning in these dictionaries.
The fourth factor is whether the term has the “look
and feel” of a surname. In this case, applicant uses the
term “Fiore” as part of its corporate name Isabella Fiore,
LLC. This name would appear to be the name of a real or
fictitious individual named Isabella Fiore. The other
evidence indicates that thousands of people living in the
United States have the surname “Fiore”. See Gregory, 70
USPQ2d at 1796 (“We conclude that ROGAN has the look and
sound of a surname. It would not be perceived as an
initialism or acronym, and does not have the appearance of
having been coined by combining a root element that has a
readily understood meaning in its own right with either a
prefix or a suffix. Rather, ROGAN appears to be a cohesive
term with no meaning other than as a surname”) (footnote
omitted). As will be discussed later, the term “Fiore” also
is an Italian word and it may be viewed as such by
prospective purchasers, even if they are not able to
translate the word. While we agree with the examining
attorney that this term would have the “look and feel” of a
Ser No. 76445173
7
surname, we do not think this factor strongly favors the
examining attorney’s position.
At this point, we conclude that the examining attorney
has met her initial burden of a prima facie showing that
the term “Fiore” would primarily be viewed as a surname so
we next look at whether applicant has rebutted the
examining attorney’s showing that the mark is primarily
merely a surname.
Applicant has responded to the examining attorney’s
evidence by submitting its own evidence and arguments in
favor of registrability. We can dispose of several of
these arguments briefly. Applicant argues that the word
“Fiore” identifies historical and current place names
“including street names, villa names, an entire town in
Italy (as well as Paraguay), and the famous Gothic
cathedral in Florence, Santa Maria del Fiore.” Brief at 9.
It would hardly be surprising that a surname also
identified streets, villas, or towns and such minor
geographic occurrences do not demonstrate that the term is
not primarily a surname. To be considered primarily merely
a surname, a term does not have to be devoid of any non-
surname significance. Harris-Intertype, 186 USPQ at 239
(evidence that “Harris” was the name of cities in Arizona,
Kansas, Minnesota, Missouri, and Oklahoma and counties in
Ser No. 76445173
8
Georgia and Texas did not prevent the term from being
considered primarily merely a surname); Gregory, 70 USPQ2d
at 1796 (“Moreover, there is nothing in the record to show
that any of these places are so well known that the
geographic significance … would overshadow the surname
significance of the term”). Similarly, applicant’s
argument (Brief at 10) that the term “Fiore” has historical
significance because it “is associated with a number of
historical people, events, and customs, including the
Italian mystic and philosopher Joachim of Fiore and the
classic Italian folk dance, ‘Ballo del Fiore’ (‘Dance of
the Flower’)” is not persuasive. Even the term McKINLEY
was held to be a surname in the United States despite its
many non-surname uses and its association with an American
president.
Applicant, in turn, asserted that "McKinley" is the
name of a county in New Mexico with a population of
64,000, and filed the affidavit of its corporate
librarian, Katherine Christiano, who stated that in a
search for uses of the word "McKinley” she found 1
airport (in Michigan), 1 bay (in the Northwest
Territory), 1 hospital (in Illinois), 1 Mountain (in
Alaska), 1 museum (in Ohio), 2 parks (in Pittsburg[h]
and Alaska), 1 peak (in Antarctica), 1 river (in
Alaska), 149 schools, and 19 cities and towns. In
addition, applicant argued that “MCKINLEY” is not
primarily merely a surname because it has
"extraordinary historical significance." In this
regard, applicant maintains:

. . . It is the name of the 25th president of the
United States who was assassinated while in
Ser No. 76445173
9
office and was memorialized in the names of
schools, streets, parks, and even a mountain,
throughout the United States and its
territories. In this regard, the surname
McKinley is in the historical class of
assassinated presidents with Lincoln and Kennedy,
and memorialized as they are, and as in another
president who died in office, Franklin D.
Roosevelt.

In re Champion International Corp., 229 USPQ 550, 550
(TTAB 1985).
In that case, the board found that the name was not of
“extraordinary historical significance,” and we are even
less persuaded that the term “Fiore” as the name of an
Italian philosopher and as part of the name of an Italian
folk dance would have more significance to purchasers in
the United States than the surname of an American
president.
However, we now address the more significant issue in
this case. Applicant argues that “the mark FIORE has an
alternative, recognized meaning: it means ‘flower’ in
Italian.” Applicant has produced “evidence that Italian is
increasingly popular as a language for study and practice
in the United States, such that a ‘beginner word’ like
‘flower’ would be readily ascertained by a wide variety of
people.” Brief at 8. The examining attorney responds by
arguing that:
Ser No. 76445173
10
Whatever meaning a term may have to the public of
another country (e.g., Italy) has no bearing on the
determination of the term’s significance to customers
in the United States…

It is evidence that, in this case, the additional
meaning asserted by applicant for the surname “FIORE”
is that of an Italian word (i.e., “FIORE”) which,
while susceptible to translation into English as
“flower” is nonetheless not an English term itself.

Brief at 7.

The term ““Fiore”” is translated as “flower; blossom,
bloom” and the English word “flower” is translated into
Italian simply as “Fiore.” Cassell’s Italian Dictionary
(1977).7 We agree with the examining attorney’s initial
point that we are concerned with the meaning of the mark in
the United States. In re Wickuler-Kupper-Brauerei KGaA,
221 USPQ 469, 470 n.2 (TTAB 1983) (“It is the surname
significance in the United States which is determinative of
the registrability issue”). However, the fact that a term
is a word in the Italian language does not mean that this
meaning would be unknown in the United States. Indeed, the
board has previously observed that “it does not require any
authority to conclude that Italian is a common, major
language in the world and is spoken by many people in the
United States.” In re Ithaca Industries, Inc., 230 USPQ

7 We take judicial notice of these translations. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 76445173
11
702, 704-05 (TTAB 1986). See also E. Martinoni, 189 USPQ
at 590 (“[W]e take judicial notice that there are many
people in the United States who speak and read Italian”).
The question now is whether we can consider the
meaning a surname has in a foreign language in our
surname analysis. Normally, in trademark cases, we
consider the translation of a foreign term in determining
whether a mark is registrable. In descriptiveness cases:
It is a well established principle of trademark law in
this country that the foreign equivalent of a merely
descriptive English word is no more registrable than
the English word itself despite the fact that the
foreign term may not be commonly known to the general
public. That is, normally no distinction can be made
between English terms and their foreign equivalents
with respect to registrability.

In re Optica International, 196 USPQ 775, 777 (TTAB 1977).
The same rule applies in genericness cases. Weiss Noodle
Co. v. Golden Cracknet and Specialty Co., 290 F.2d 845, 129
USPQ 411, 413 (CCPA 1961) (“In the instant case
registration of the Hungarian name for noodles, ‘haluska’
or its phonetic equivalent in English, whether or not
hyphenated, would be contrary to law for no one can be
granted the exclusive use of the name of an article, either
in our native tongue or its equivalent in any foreign
language”). Furthermore, in likelihood of confusion cases,
the doctrine of foreign equivalents is applied to determine
Ser No. 76445173
12
if the marks are similar in meaning or connotation. Ithaca
Industries, 230 USPQ at 704.
In a previous case, when the board held that PIRELLI
was a surname, it relied on evidence that PIRELLI “has no
ordinary meaning in the Italian language, as the Italian
dictionary excerpt, made of record by the Examining
Attorney, shows.” In re Industrie Pirelli Societa per
Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988).8 In other cases,
the board considered the term’s foreign language meaning
before it determined that the term was primarily merely a
surname in the United States. In re Picone, 221 USPQ 93,
(TTAB 1984) (Dictionary showing that “Piccone” was the
Italian word for “pick, pick ax” was not sufficient to
overcome surname significance of the term PICONE); In re
Carl Braun, Camerawerk, 124 USPQ 184 (TTAB 1960) (Despite
the fact that “Braun” was the German word for “brown,” the
board held that “it is clear that it is applicant’s
surname, it is used as such, and it would be thought of and
recognized as such by the average purchaser”).

8 In In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ2d
652, 653 (Fed. Cir. 1985), the Federal Circuit, in affirming the
board’s determination that “Darty” was a surname, noted that the
board found that the term did not appear in dictionaries as a
French or English word and that applicant did not submit any
evidence that the term has any non-surname significance.
Ser No. 76445173
13
We assume that if applicant was seeking registration
for its mark FIORE for “flowers,” the examining attorney
would apply the doctrine of foreign equivalents and refuse
registration on the ground that the mark is at least
descriptive of the goods. Similarly, if the examining
attorney discovered a registration for the English word
“Flower” for “all purpose sports bags,” we presume that the
examining attorney would have applied the doctrine of
foreign equivalents in considering whether there was a
likelihood of confusion between the marks FIORE and FLOWER
when they are used on identical goods. Similarly, we hold
that whether a term is primarily merely a surname must take
into consideration the meaning the term has in a foreign
language. Indeed, that is the standard procedure when
encountering foreign words in a trademark. For example,
the term KUPPERS KOLSCH was held to be primarily merely a
surname for beer because the evidence established that
KUPPER was a surname and “Kolsch” was a type of beer
produced in Cologne, Germany. Wickuler-Kupper-Brauerei,
221 USPQ at 470. It would be inconsistent to translate the
second term and ignore the translation, if there was one,
of the first term.
If the term has an established meaning, as in this
case, we consider the meaning’s significance in the United
Ser No. 76445173
14
States. We note that there are limitations to the
application of the doctrine of foreign equivalents.
“Although words from modern languages are generally
translated into English, the doctrine of foreign
equivalents is not an absolute rule and should be viewed
merely as a guideline. The doctrine should be applied only
when it is likely that the ordinary American purchaser
would stop and translate the word into its English
equivalent.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1696 (Fed. Cir. 2005) (Citations and internal
quotation marks omitted). The rule is not to be applied
mechanically. Even terms with English language meanings
may still be held to be primarily merely surnames. “[I]f
there is a readily recognized meaning of the term apart
from its surname significance, registration should be
granted. This does not mean, however, that all that is
necessary to overcome a prima facie showing of surname
significance is that the applicant uncover a dictionary
entry for the term in question.” In re Nelson Souto Major
Piquet, 5 USPQ2d 1367, 1367-68 (TTAB 1987). In that case,
the fact that “Piquet” was “the name of a relatively
obscure card game is unlikely to be known to purchasers and
is certainly not the ordinary meaning of the term.” Id. at
Ser No. 76445173
15
1368. However, if the term’s dictionary definition is not
obscure, it may be a significant factor in determining that
the term is not primarily merely a surname. See, e.g.,
United Distillers, 56 USPQ2d at 1221 (Dictionary definition
of “Hackler” as “one that hackles; esp.: a worker who
hackles hemp, flax or broomcorn” considered in determining
that HACKLER was not primarily merely a surname); Fisher
Radio Corp. v. Bird Electronic Corp., 162 USPQ 265, 267
(TTAB 1969) (BIRD not primarily merely a surname).
Applying the doctrine of foreign equivalents in this
case, we find that ““Fiore”” is an Italian word that is
listed as the only translation of the common English word
“flower.” It is the type of term that potential customers
would stop and translate. Italian, as a major, modern
language, is not an obscure language such as Old English.
In re Winegard Co., 162 USPQ 261, 262-63 (TTAB 1969)
(“Applicant indicates that ‘WINEGARD’ is the equivalent of
‘Winegeard,’ an Old English term meaning a vineyard. We
are of the opinion that few of the prospective purchasers
of applicant’s goods would be aware that ‘WINEGARD’ is the
equivalent of ‘Winegeard,’ if that be so”). Also, the term
“Fiore” is spelled in the standard Italian dictionary form.
Thus, there is no question of whether the term would be
recognized in its current form as the Italian word for
Ser No. 76445173
16
“flower.” Picone, 221 USPQ at 95 (Italian word “Piccone”
did not establish that “Picone” was not a surname); In re
Pickett Hotel Co., 229 USPQ 760, 761 (TTAB 1986)
(“‘Pickett’ and ‘picket’ are not interchangeable in
appearance or meaning”). Furthermore, this is not a case
where the surname’s non-surname meaning in Italian is
obscure. In re Advanced Spine Fixation Systems, Inc., 25
USPQ2d 1367, 1369 (TTAB 1992) (“Many surnames of foreign
origin have obscure meanings which lose out to the primary
surname significance”).
In surname cases, it has long been held that if “the
mark has well known meanings as a word in the language and
the purchasing public, upon seeing it on the goods, may not
attribute surname significance to it, it is not primarily a
surname. ‘King,’ Cotton,’ and ‘Boatman’ fall in this
category.” Rivera Watch Corp., 106 USPQ at 149. See also
Ex parte Gemex Co., 111 USPQ 443, 443 (Comm’r Pat. 1956)
(“‘WELLINGTON’ is a surname; it is a geographical name,
being the national capital of New Zealand and the name of a
number of towns in the United States; it is a baptismal
name; and it is the name of one of Great Britain's most
important dukedoms. There is no way of knowing what the
impact on the purchasing public is likely to be upon seeing
"WELLINGTON" watch bracelets and straps, or with what, if
Ser No. 76445173
17
anything, purchasers are likely to associate the mark”).
Indeed, the board considered the fact that CALISTO was the
variant spelling of the Greek mythological nymph “Callisto”
in determining that the term was not primarily merely a
surname. In re Monotype Corp., 14 USPQ2d 1070, 1071 (TTAB
1989).9
When we consider the common meaning of the term
“Fiore” in Italian, we conclude that it does have a meaning
that detracts from the surname significance of the term.
The term does not have such an obvious “look and feel” of a
surname that potential purchasers would overlook its
Italian language meaning. Our case law holds that if we
have doubts about whether the term is a surname, we resolve
them in favor of the applicant and for publication of the
mark. United Distillers, 56 USPQ2d at 1222; In re S.
Oliver Bernd Freier GmbH & Co., 20 USPQ2d 1878, 1879 (TTAB
1991). Therefore, we resolve our doubt in applicant’s
favor.
Decision: The refusal to register applicant’s mark on
the ground that it is primarily merely a surname is
reversed.

9 Even when a term had no recognized dictionary meaning, the
board considered an applicant’s argument that the term SAVA, “is
an acronym for ‘Securing America's Valuable Assets.’” In re Sava
Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994).