P. Cerlis Corp.

Trademark Trial and Appeal Board

Aug 26, 1999

No. 75141622 (T.T.A.B. Aug. 26, 1999)

Hearing: Paper No. 14
December 15, 1998 EWH/cj
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 26, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re P. Cerlis Corp.
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Serial No. 75/141,622
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G. Franklin Rothwell of Rothwell, Figg, Ernst & Kurz for P.
Cerlis Corp.
John E. Michos, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
P. Cerlis Corp. (applicant) seeks to register F. ROQUE
in typed drawing form for cigars. The intent-to-use
application was filed on July 25, 1996.
The Examining Attorney has refused registration on the
basis that F. ROQUE is primarily merely a surname within
the meaning of Section 2(e)(4) of the Lanham Trademark Act.
Ser No. 75/141,622
2
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs and were present at a hearing held on
December 15, 1998.
In In re Benthin Management, 37 USPQ2d 1332 (TTAB
1995) this Board identified four factors which need to be
considered in determining whether a particular mark would
be viewed as primarily merely a surname. See also 2J.
McCarthy, McCarthy on Trademarks and Unfair Competition
Section 13:30 at pages 13-53 to 13-56 (4th ed. 1999).
The first factor to be considered is “the degree of a
surname’s rareness.” In re Garan, 3 USPQ2d 1537, 1540
(TTAB 1997). Relying upon a national telephone directory,
the Examining Attorney demonstrated that there are over
1,400 individuals with the surname ROQUE. Given the fact
that this national telephone directory has 83 million
listings, the surname ROQUE is by no means a common
surname. However, by the same token, it is not nearly as
rare as was the surname BENTHIN in the case of Benthin
Management. In the latter case, there were only
approximately 100 individuals (out of 76 million listings)
with the surname Benthin. Thus, we find that this first
factor – the rareness of the surname – is a neutral factor
favoring neither applicant nor the Examining Attorney.
Ser No. 75/141,622
3
The second factor in determining whether F. ROQUE
would be perceived as primarily merely a surname is whether
there is “anyone connected with applicant” having said
surname. In re Monotype Corp., 14 USPQ2d 1070, 1071 (TTAB
1989). In a paper dated June 18, 1997 applicant stated
that “the name, F. Roque, is the name of the mother of the
owner of applicant and her written consent for use and
registration of her name as a trademark is attached.”
Thus, this second factor weighs in favor of a finding that
the mark F. ROQUE would be perceived as primarily merely a
surname.
The third factor to be considered is whether F. ROQUE
(or ROQUE) has any “recognized meaning other than that of a
surname.” In re BDH Two, 26 USPQ2d 1556, 1558 (TTAB 1993)
(emphasis added). Applicant argues that in the English
language, the word “roque” refers to a type of croquet
played on a hard-surfaced court with a raised border.
Applicant goes on to note that the same word in Spanish
means a rook in the game of chess, and in French means
castling in the game of chess. (Applicant’s brief p.3). We
find that in the English language, the word “roque” is a
very obscure term, and it simply lacks any other recognized
meaning other than to a minimal number of American
consumers. Obviously, there are tens of thousands of words
Ser No. 75/141,622
4
in English dictionaries which are totally unknown to the
vast majority of Americans. We believe that the word
“roque” is one such word. Moreover, we note that applicant
has made of record no evidence – such as an affidavit from
a language expert – demonstrating that the term “roque” is
known to other than a very minimal number of American
consumers (i.e. croquet aficionados). Thus, this third
factor favors a finding that F. ROQUE would be perceived as
primarily merely a surname.
This brings us to the fourth factor, namely, whether
F. ROQUE has the “structure and pronunciation” of a
surname, or stated somewhat differently, the “look and
sound” of a surname. Benthin Management, 37 USPQ2d at
1333. Because of the presence of the initial F., we find
that in its entirety, F. ROQUE has the look and sound of a
surname. As Professor McCarthy has stated, “the use of an
initial with a word may serve to emphasize the surname
significance of the word.” 2 J. McCarthy, McCarthy on
Trademarks and Unfair Competition Section 13:30 at page 13-
55 (4th ed. 1999). Moreover, the predecessor to our primary
viewing Court explicitly stated that the addition of a
single initial before a surname is simply insufficient to
remove the surname from the category of being primarily
merely a surname. In re I. Lewis Cigar, 205 F.2d 204, 98
Ser No. 75/141,622
5
USPQ 265, 267 (CCPA 1953). As for applicant’s contention
that the initial F. may indicate Fiji, France or fine, we
simply do not accept this argument. See applicant’s brief
page 5. Again, applicant has made of record no evidence
demonstrating that the initial F. is recognized by any more
than a very minimal number of American consumers as
indicating any of the foregoing terms.
Given the fact that there is an individual connected
with applicant with the name F. Roque; the fact that F.
ROQUE (or ROQUE), to the vast majority of Americans, has no
recognized meaning other than that of a surname; and the
fact that, especially with the initial F., the mark has the
look and sound of a surname, we find that F. ROQUE would be
perceived as primarily merely a surname.
Decision: The refusal to register is affirmed.
R. F. Cissel
E. W. Hanak
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board