Miavana Wholesale Co. Inc.

Trademark Trial and Appeal Board

Jul 9, 1998

No. 74688234 (T.T.A.B. Jul. 9, 1998)

Paper No. 11
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 9, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Miavana Wholesale Co. Inc.
________
Serial No. 74/688,234
_______
Angel Castillo, Jr. of Castillo, Stafford & Wald for Miavana
Wholesale Co. Inc.
Mitchell Front, Trademark Examining Attorney, Law Office 101
(R. Ellsworth Williams, Managing Attorney)
_______
Before Seeherman, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Miavana Wholesale Co. Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark BATEY for canned vegetables, dried beans, fruit drinks
and non-alcoholic malt based beverage, namely malta.1
Registration has been finally refused pursuant to Section
2(e)(4) of the Trademark Act, 15 U.S.C. 1052(e)(4), on the

1 Application Serial No. 74/688,234, filed June 7, 1995,
asserting a bona fide intention to use the mark in commerce.
Ser No. 74/688,234
2
ground that the applied-for mark is primarily merely a
surname.
Applicant and the Examining Attorney have filed
briefs.2 An oral hearing was not requested.
In support of the surname refusal the Examining
Attorney has made of record excerpts from the PHONEDISC
U.S.A. database, which contains material gathered from
address lists and telephone directories. The excerpt
indicates that a total of 987 listings for the name BATEY
were found in the database; of these, approximately 200 were
printed. The print-out shows listings from all across the
United States, including Alabama, Arizona, California,
Delaware, Florida, Illinois, Kentucky, New Hampshire, New
York, Ohio, Texas and Utah.
Applicant argues that the 987 listings shown by the
PHONEDICS U.S.A. report, out of the 260 million residents of
the United States, are statistically insignificant and that
they actually demonstrate that BATEY is an exceedingly rare

2 With its brief applicant submitted certain exhibits, namely, a
page from the Miami telephone directory, an article from “The
Miami Herald” and a printout from the “Encarta” CD ROM
Encyclopedia and “The Grolier Multimedia Encyclopedia.” The
Examining Attorney objected to the consideration of these
materials because they were not properly of record. The
Examining Attorney is correct that the record in the application
should be complete prior to the filing of an appeal, and that the
Board will ordinarily not consider additional evidence after the
appeal is filed. Trademark Rule 2.142(d). Accordingly, we have
not considered the telephone directory excerpt or newspaper
article. However, the Board does take judicial notice of
encyclopedia entries, and in this case we have considered the
information regarding U.S. and Miami population information.
Ser No. 74/688,234
3
surname in the United States. The question is not, however,
how many times a surname might appear in telephone
directories; rather, it is whether the primary significance
of BATEY to consumers is that of a surname.
In this case, while BATEY is certainly not as common a
surname as Smith or Jones, the fact that it is the surname
of people located all over the United States shows that
consumers throughout the country have been exposed to it,
and will regard it as a surname. Thus, the Examining
Attorney has met the Office’s burden of demonstrating, prima
facie, that BATEY is primarily merely a surname. See In re
Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652
(Fed. Cir. 1985).
To rebut the Office’s evidence, applicant has argued
that BATEY has another, non-surname meaning in the Spanish
language. Applicant has provided the following translations
of “batey” taken from three English-Spanish/Spanish-English
dictionaries:
(Cuba) sugar mill town
Appleton’s New Cuyás Dictionary, © 1972
(Cuba) premises of a sugar refinery;
(P.R.) front yard
Follett World-Wide Spanish Dictionary,
© 1966.
(Ant) clearing in front of a country
house, forecourt
Collins Spanish-English English-Spanish
Dictionary, © 1971.

Ser No. 74/688,234
4
Applicant has also submitted excerpts from the books
Historia de la Isla de Cuba (History of the Island of Cuba)
by Carlos and Manuel Marquez Sterling, and Exposicione de
Esculturas de los Indios Tainos (Exposition of Sculptures of
the Taino Indians), a publication of the Centro de Estudios
Avanzados de Puerto Rico y El Caribe in Puerto Rico.
Although these publications are in Spanish, applicant has
translated portions of the excerpts in its response,
indicating that “batey” was the name of a ball game of the
Tainos of the Greater Antilles as well as the Tainos’ term
for a land clearing in which they held great festivals and
played a ball game.
Applicant asserts that it intends to use BATEY “to
identify its food and beverage products aimed primarily at
Spanish-speaking consumers throughout the United States,
including in predominantly Hispanic Miami, Florida, and
Puerto Rico.” Brief, p. 9. It contends that “to the sixty
percent of Miami’s and almost half of Dade Country’s
residents who are Hispanic, and to the approximately
22-million residents of the United States who are Hispanic,”
brief, p. 10, BATEY will be perceived as a Spanish word
rather than a surname.
There are two problems with applicant’s argument.
First, there is nothing in applicant’s identification of
goods which would restrict its sales to Miami, to Dade
Ser No. 74/688,234
5
County where Miami is located, or to the residents of the
United States who are Hispanic. English-speaking people, as
well Spanish-speaking people, are likely to purchase such
items as canned vegetables, dried beans and fruit drinks.
Thus, we must deem the purchasing public for applicant’s
goods to include the general public, not merely those
members of it who are Hispanic.
Second, and perhaps more importantly, applicant has not
demonstrated that, even among Spanish-speaking people in the
United States, a significant number would recognize that
BATEY has a non-surname meaning. Two of the dictionaries
indicate that “batey” has the meaning, in Cuba, of the
premises of a sugar refinery or a sugar mill town, while
another dictionary states that in the Antilles it means the
clearing in front of a country house. There is only one
dictionary listing which indicates that “batey” has a
meaning within the territory of the United States: the
“Follett” dictionary lists “front yard” as a meaning of the
word in Puerto Rico.
Moreover, the Examining Attorney has made of record two
Spanish-English English-Spanish dictionaries in which the
word “batey” does not even appear. Although applicant
characterizes them as pocketbook dictionaries, the Webster’s
dictionary describes itself as a “comprehensive bilingual
dictionary” and the Cassell’s dictionary indicates it
Ser No. 74/688,234
6
contains over 45,000 entries and “includes everyday
conversational language, and technical and professional
terms.” The Board also takes judicial notice that “batey”
does not appear in the Random House Latin-American Spanish
Dictionary, © 1997, despite the fact that “[t]he aim of this
dictionary is to cover as much current vocabulary as
possible, as well as certain items found in standard works
of Modern Spanish and English literature”; The Concise
American Heritage Larousse Spanish Dictionary, © 1989; or
Hamel’s Bilingual Dictionary of Mexican Spanish, 2d ed.
1996, although this volume contains “more than 6,000
entries” and “includes all entries listed in the Spanish
Royal Academy Dictionary pertaining to Mexico.” The only
dictionary we have found, other than those submitted by
applicant, in which “batey” appears at all is Cassell’s
Spanish-English English-Spanish Dictionary, © 1978, which it
is listed as meaning, in Cuba, “central complex on sugar
plantation.”
As for the evidence that to the Taino Indians “batey”
was the name of a ball game or the clearing where this game
was played, the Examining Attorney has pointed out, and
applicant has conceded, the Taino Indians were a pre-
Columbian group of people living in the West Indies, and who
are “long-extinct.” Applicant’s brief, p. 11. The very
manner in which the Spanish-language books on the Tainos
Ser No. 74/688,234
7
depict this term (in italics, followed by a definition) show
that the term would not be readily known to the average
Spanish-speaking person. The fact that scholars or others
who have studied these Indians may have been exposed to the
word is not a sufficient basis to find that the purchasing
public would regard BATEY as not primarily merely a surname.
In Ex parte Reeves Brothers, Inc., 84 USPQ 19 (Com’r.
Pats. 1949), the Commissioner held that REEVES was primarily
merely a surname despite the fact that dictionary
definitions of “reeve” include, inter alia, “passing a rope
through a block,” an historical reference to a law officer,
and “the female equivalent of a ruff.” “The fact that other
meanings may exist does not necessarily indicate that a word
would ordinarily have other than its primary meaning, and
the fact that lexicographers or others might recognize a
possible unusual meaning is not controlling.”
Similarly, the fact that “batey” may have a meaning in
Cuba, the Antilles or Puerto Rico, or may have an historical
connotation to those studying the Taino Indians does not
detract from primary significance of BATEY as a surname to
the purchasing public.
Applicant has also pointed to the fact that the Bacardi
Corporation had previously owned registrations for BATEY,
and that the computerized records on these registrations
included a translation statement that BATEY is “a central
Ser No. 74/688,234
8
complex on a sugar plantation.” These registrations were
both cancelled for failure to file Section 8 affidavits of
use, and the Examining Attorney indicates that he was unable
to obtain the files, so we cannot determine why the
translation statements were entered. However, we do not
view the inclusion of the statements as a prior
determination by the Office that BATEY is not primarily
merely a surname. First of all, a decision by an Examining
Attorney in connection with another application is not
binding on the Board, which must consider registrability
based on the record in the particular case. More
importantly, we note that both of these registrations were
issued on the Supplemental Register, which would be
consistent with a finding that BATEY is primarily merely a
surname.
We have also considered applicant’s statement that the
state of Florida has issued a “certificate of allowance of
reservation of name BATEY for proposed Florida state
trademark registration.” A decision by the state of Florida
to issue a state registration has no bearing on the
determination of registrability by the Patent and Trademark
Office, which must follow federal law in this matter.
In short, the evidence submitted by applicant is
insufficient to show that, to a significant number of the
purchasing public in the United States, BATEY has a
Ser No. 74/688,234
9
non-surname meaning. Accordingly, applicant has failed to
rebut the prima facie case presented by the Examining
Attorney.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board