Roundy's Supermarkets, Inc.

Trademark Trial and Appeal Board

Nov 19, 2008

No. 77275882 (T.T.A.B. Nov. 19, 2008)

Mailed: November 19, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Roundy's Supermarkets, Inc.
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Serial No. 77275882
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Nicole J. Renouard of Whyte Hirschboeck Dudek S.C. for Roundy's
Supermarkets, Inc.

Tamara G. Frazier, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Holtzman, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Roundy's Supermarkets,
Inc. to register the mark RIANO'S (in standard character form)
for "retail grocery stores" in Class 35.1
The trademark examining attorney has refused registration
on the ground that the mark is primarily merely a surname under
Section 2(e)(4) of the Trademark Act. When the refusal was made
final, applicant appealed.

1 Application Serial No. 77275882, filed September 10, 2007, based on
an allegation of a bona fide intention to use the mark in commerce.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Serial No. 77275882
2
Both applicant and the examining attorney have filed
briefs.
A term is primarily merely a surname if, when viewed in
relation to the goods or services for which registration is
sought, its primary significance to the purchasing public is
that of a surname. See In re United Distillers plc, 56 USPQ2d
1220 (TTAB 2000). Among the factors to be considered in
determining whether a term is primarily merely a surname are (1)
the degree of a surname's rareness; (2) whether anyone connected
with applicant has that surname; (3) whether the term has any
recognized meaning other than that of a surname; and (4) whether
the term has the "look and sound" of a surname. See United
Distillers, supra at 1221.
As to the first factor, the degree of rareness, the
examining attorney submitted a printout from the LexisNexis
Person Locator P-Find database indicating that there are 330
listings for the surname "Riano," along with a partial listing
of the names.2 The examining attorney has also submitted a page
from the website, target.com, advertising the sale of "one of a
series of family name books" which is entitled The Riano Name in

2 The examining attorney also introduced a printout from the website,
peoplefinders.com, showing 100 entries for Riano. However, because
the extent of overlap, if any, between the two lists cannot be
determined, these entries have not been counted toward the total
number of listings.
Serial No. 77275882
3
History.3 The examining attorney acknowledges that Riano is a
relatively rare surname.
Applicant argues that Riano is an exceptionally rare
surname. Applicant contends that the rareness of the surname
can only be determined by comparing the number of uses of that
surname with the uses of other surnames in the population. To
support this contention, applicant points to its evidence
showing that there are very few occurrences of the name in
certain individual cities in the United States, and argues that
"less than one-ten thousandth of the population (0.00097%) would
have the surname 'Riano.'" Brief, p. 4. Applicant has
submitted a printout from wikipedia.org showing that "Riano"
does not appear in the 100 most common surnames in the United
States; printouts from census.gov and surnames.behindthename.com
showing that it is not among the 1000 most common surnames in
the United States; and an additional printout from census.gov
showing that the name is not even in the top 88,000 most common
surnames in the United States.

3 Applicant argues that the advertising for this book which references
an additional "300,000 family name books" in the series "undercuts the
credibility of this book as proof of the commonality of the 'Riano'
surname." Brief, p. 5. However, we do not view this as evidence that
the surname is common or well known, but simply as additional evidence
that it is a surname.
Serial No. 77275882
4
We find, based on the evidence, that Riano is a rare
surname.4 However, Section 2(e)(4) makes no distinction between
rare and commonplace surnames, see In re Picone, 221 USPQ 93
(TTAB 1984), and even a rare surname is unregistrable if its
primary significance to purchasers is a surname. See In re
Giger, 78 USPQ2d 1405 (TTAB 2006); and 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."). See also In re Industrie Pirelli
Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988)
("Applicant's evidence proves that 'Pirelli' is a rare surname
but fails to rebut the Examining Attorney's prima facie showing
that 'Pirelli' would be viewed as a surname by the relevant
public.").
Moreover, the evidence in this case far exceeds that in
other cases where the surname was considered rare and thus,
registrable, particularly where the limited number of listings
was combined with other factors in applicant's favor. See,
e.g., In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184

4 In making this finding we have given little weight to applicant's
argument and evidence that the name represents only a very small
percentage of the total population. We note the Board's observation
in In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004) that given the
"vast computerized database" of surname listings and the large number
of different surnames in the United States, "even the most common
surnames would represent but small fractions of such a database."
Serial No. 77275882
5
USPQ 421 (Fed. Cir. 1975) (six directory listings for the
surname DUCHARME; In re Garan, Inc., 3 USPQ2d 1537 (TTAB 1987)
(six directory listings for surname GARAN and one LexisNexis
listing). See also In re Sava Research Corp., 32 USPQ2d 1380
(TTAB 1994) (100 directory listings for SAVA; and the fact that
SAVA had another meaning, i.e., as an acronym); and In re
Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995) (100
directory listings for BENTHIN, and the mark was displayed in a
"highly stylized form"). As discussed later in this decision,
there are no other factors in the present case which would
detract from the surname significance of this mark.
Indeed, other cases have found a term to be a rare surname,
yet unregistrable, based on far fewer listings than we have
here. See, e.g., In re Pohang Iron & Steel Co., Ltd., 230 USPQ
79 (TTAB 1986) (POSTEN primarily merely a surname based on 11
directory listings and 12 references from Lexis/Nexis database);
and In re E. Martinoni Company, 189 USPQ 589 (TTAB 1975) (3
directory listings for the surname MARTINONI).
While Riano may be a rare surname, we cannot find, based on
this record, that the surname is so rare that this factor should
weigh in applicant's favor.5

5 It is true as applicant points out that the degree of rareness may
have a bearing on perception of the term as a surname. Contrary to
applicant's contention, however, the non-precedential case of In re
Sikorsky Aircraft Corporation, Serial No. 78221800 (TTAB 2006) is not
on point. Unlike the Sikorsky case, where the examining attorney
Serial No. 77275882
6
As to the second factor, applicant states that no one
associated with applicant has the surname "Riano." While the
fact that a term is the surname of an individual associated with
the applicant may be strong evidence of the surname significance
of the term, see In re Industrie Pirelli Societa per Azioni, 9
USPQ2d 1564 (TTAB 1988), contrary to applicant's contention, the
fact that no one associated with the applicant has the surname
"Riano" does not tend to establish one way or the other whether
the term would be perceived as a surname. See Gregory, supra at
1795. Thus, the fact that no one associated with applicant has
the surname is not a factor that favors applicant, but rather is
neutral.
The third factor is whether there is another recognized
meaning for Riano. The examining attorney has submitted the
relevant page from the website Dictionary.reference.com
containing no entry for "riano" to demonstrate that "riano" has
no non-surname, dictionary meaning.
Applicant, however, argues that "Riano" has several
meanings other than as a surname. None of applicant's arguments
is persuasive. First, applicant's argument that "Riano" would
be understood as a shortened version of "Mariano," which

failed to establish a prima facie case, having submitted evidence of
only one listing for the name Sikorsky, based on the evidence in the
present case, this is clearly not a situation where the surname is so
rare or obscure that it may not fall within the proscription of
Section 2(e)(4) of the Act.
Serial No. 77275882
7
applicant claims is a given name, is speculative and
unsupported. Applicant has submitted TESS printouts of two
third-party registrations for MARIANO'S and design (Reg. Nos.
1001671 and 1145216), one of which indicates that "The name and
portrait shown are that of Mariano Martinez, Jr. whose consent
is of record." This evidence may show that "Mariano" is a given
name. However, it has no bearing on the question of whether the
different name "Riano" would also be perceived by the public as
a given name.
Applicant also argues that "Riano" has geographical
significance as a small town in the province of Rome, Italy.
Applicant has submitted an entry for "Riano, Italy" from the
website wikipedia.org which states that "Riano" has a population
of 7,185 and which describes the area as:
a commune (municipality) in the Province of Rome in the
Italian region Latium. It is located about 20 km north of
Rome, in the Tiber River valley, not far from Veio. ...

The relevant question is whether the term has another
recognized significance other than as a surname. This evidence
is not sufficient to find that Riano, as the name of a small
town in a foreign country, would be familiar to many Americans
or that it would be anything but an obscure geographic place.
See, e.g., Gregory, supra at 1796 ("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
Serial No. 77275882
8
significance of the term"); Sava Research, supra at 1381 ("we
have given little weight to the fact that SAVA is the name of a
town in Israel and a river in Bosnia. We think that these
meanings would most likely not be known to American purchasers
of applicant's secure communication systems."); and Picone,
supra at 95 (the fact that "the different and apparently obscure
word 'Picon' is the name of a town and a mountain in Spain" did
not overcome prima facie case of the examining attorney).
Applicant further argues, relying on In re Isabella Fiore
LLC, 75 USPQ2d 1564 (TTAB 2005), that "riano" has a meaning in a
foreign language and, in particular, that the term "is a
derivation of the Italian word 'riannodare' - which means 'to
renew.'" Applicant has submitted an entry from Collins Italian
Dictionary (2nd ed. 2005) defining "riannodare" as "(lacci) to
retie, (cravatta) to reknot (fig) (amicizia) to renew."
Applicant argues that in relation to its grocery stores, the
term suggests "'renewed' love of supermarkets and shopping for
food." Brief, pp. 9-10.
Even assuming that American consumers who are familiar with
Italian would translate "riannodare" into English as "to renew,"
(and it is not clear on this record that they would), there is
no evidence that "riannodare" and "riano" are equivalent terms.
There is nothing to indicate that the different word "riano"
would be recognized by consumers as a derivation of
Serial No. 77275882
9
"riannodare," or that they would ascribe the same English
meaning to both terms. See, e.g., In re Woolley's Petite
Suites, 18 USPQ2d 1810 (TTAB 1991) ("WOOLLEY'S and 'wooly'" are
not "interchangeable words"); In re Pickett Hotel Co., 229 USPQ
760, 761 (TTAB 1986) ("'Pickett' and 'picket' are not
interchangeable in appearance or meaning”); and Picone, supra at
95 ("That applicant has established that...'piccone' is an
Italian word meaning 'pick' or 'pickax'" did not overcome the
examining attorney's prima facie case).
Thus, applicant's reliance on Fiore is misplaced. In that
case, the Board found, applying the doctrine of foreign
equivalents, that "Fiore" is an Italian word "that is listed as
the only translation of the common English word 'flower,'" and
further that the term "is spelled in the standard Italian
dictionary form." Thus, the Board concluded that "there is no
question of whether the term would be recognized in its current
form as the Italian word for 'flower.'" Applicant has not shown
that the term "Riano," itself, has an ordinary foreign language
meaning, let alone, unlike in Fiore, that any such foreign
language meaning would be familiar to the American public.6

6 Applicant has also relied on In re The Monotype Corp. PLC, 14 USPQ2d
1070, 1071 (TTAB 1989), wherein the Board found that CALISTO is not
primarily merely a surname in that (distinguishing Pickett Hotel) it
is the phonetic equivalent of "Callisto" which has non-surname
meanings. In the present case, however, "riano" is not the equivalent
of "riannodare," phonetically or otherwise.
Serial No. 77275882
10
As to the fourth factor, we find that RIANO has the "look
and feel" of a surname, given the evidence that it is indeed a
surname, albeit a rare one, and the fact that there is nothing
to indicate that the term would be perceived as having any other
meaning or significance. In addition, the mark is not "RIANO"
alone but "RIANO'S" with an apostrophe "s" and we find that the
possessive form of the term reinforces its impression as a
surname.
Applicant argues that In re Luis Caballero, S.A., 223 USPQ
355, 356 (TTAB 1984), wherein the term BURDONS was found to be a
surname, "stands for the proposition that an apostrophe 's' is
irrelevant to the surname analysis." Reply, p. 4. Applicant
misstates the Board's point in that case. The only point the
Board was making was that businesses often do not use an
apostrophe to indicate possessive form. The Board made no
finding as to whether a possessive form does or does not
indicate a surname.
Applicant's reliance on Woolley's Petite Suites, supra, is
similarly unpersuasive. While the Board did say, as applicant
notes, that "the addition of an apostrophe 's' to ...WOOLLEY
does nothing to change surname character," the Board
specifically stated that "In fact, since the apostrophe 's'
indicates the possessive form of the name, its use probably
reinforces its surname significance." In other words, the
Serial No. 77275882
11
possessive form does not detract from the surname significance
of a term, but may in fact reinforce it.
In view of the foregoing, we find that RIANO'S would be
perceived primarily as a surname.
Decision: The refusal to register under Section 2(e)(4) of
the Trademark Act is affirmed.