Bonert's Inc.

Trademark Trial and Appeal Board

Mar 10, 2008

No. 76627189 (T.T.A.B. Mar. 10, 2008)

Mailed: March 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bonert’s Inc.
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Serial No. 76627189
_______

Jill M. Pietrini of Manat, Phelps & Philips, LLP for
Bonert’s Inc.

S. Michael Gaafar, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Quinn, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On January 6, 2005, Bonert’s Inc. (applicant) filed an
application to register the mark BONERT’S RUSTIC PIES in
standard character form on the Principal Register for
“pies” in International Class 30. Applicant asserts a bona
fide intention to use the mark in commerce as its basis for
registration. In addition, applicant asserts ownership of
prior Registration Nos. 2329922 for the mark BONERTS and
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 76627189
2
2387512 for the mark BONERTS SLICE OF PIE and design both
for bakery products and pies.
The examining attorney refused registration 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). In an attempt to traverse the refusal,
applicant amended its mark to BONERTS RUSTIC PIES. When
the refusal was made final, applicant appealed.
Issues Not Before the Board
A clarification regarding the issue before us in this
proceeding is believed necessary at this time.
Acquired Distinctiveness
We begin by observing that applicant raised the
following argument in its response to the examining
attorney’s August 12, 2005 Office action:
Applicant is the owner of two other trademark
registrations that include the word BONERT:
BONERTS (Reg. No. 2,329,922) and BONERTS SLICE OF
PIE & design (Reg. No. 2,387,512) (“Applicant’s
Registrations”), both for bakery goods and pies.1
Both of Applicant’s registrations have been in
use in commerce since October of 1993. As such,
Applicant’s consumers will already be familiar
with Applicant and its goods and services in
connection with these other marks. Accordingly,
the primary significance to the purchasing public
of the mark BONERT’S RUSTIC PIES will be of baked
goods, and not that of a surname.

1 Applicant did not introduce into the record copies of these
asserted registrations.
Ser No. 76627189
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(February 14, 2006 response to Office action, p. 2,
emphasis in original.) We note, however, that applicant
did not, at any time during the examination of the subject
application, submit a claim that the name BONERT or BONERTS
in the mark BONERTS RUSTIC PIES mark had acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. 1052(f) on the basis of applicant’s ownership of its
asserted prior registrations. Nor do we construe
applicant’s above-referenced arguments as comprising such a
Section 2(f) claim. Furthermore, the examining attorney
makes the following statement in his brief (p. 1-2):
On March 14, 2006, the examining attorney
attempted to contact the applicant to discuss the
applicant’s options regarding registration on the
Principal Register pursuant to Section 2(f) of
the Trademark Act, as well as to discuss a
disclaimer of the wording “rustic pies.”
However, no agreement could be reached, and
therefore, no action was taken by the examining
attorney at such time.

Thus, while applicant and the examining attorney discussed
amendment of the instant application to claim acquired
distinctiveness pursuant to Section 2(f), no such amendment
was filed. Accordingly, the issue of acquired
distinctiveness is not before us in this case.
Disclaimer
We observe in addition that the examining attorney
suggested in both his August 12, 2005 and March 23, 2006
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Office actions that applicant could overcome the Section
2(e)(4) refusal by amending the application to seek
registration on the Supplemental Register after filing an
acceptable allegation of use. The examining attorney
further advised applicant that in the event of an amendment
to the Supplemental Register it would be necessary to
disclaim the wording “RUSTIC PIES” because such term “is
generic for a certain type of pie” (August 12, 2005 Office
action, p. 3). Excerpts of evidence made of record by the
examining attorney to support such a requirement follow
(emphasis added):

RUSTIC AS HE WANTS TO BE
…For dessert, try the compellingly gritty yet
soft bittersweet-chocolate polenta pudding cake.
A barely sweet ricotta torta with chestnut honey
and a sprinkling of bee pollen has a monastic
spareness to it. Peach and blueberry crostada is
a cute small rustic pie with a sturdy, buttery
crust and the surprising crunch of chopped nuts
added to the fruit.
LA Weekly (California) October 3, 2003

FINAL WORDS FOR THE SOLO DINER
To bake a pie, bake the recipe in a small fluted
tart pan. Or instead of using a pie or tart pan
at all, make a small rustic pie. Those are the
ones that just flop the dough over the filling on
a cookie sheet, and size is not very important.
Pittsburgh Post-Gazette (Pennsylvania) March 24,
2005

EASIER THAN PIE; RICH BUTTERY CROSTATA USES FRESH
BERRIES OF THE SEASON
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Chef Tim Cushman, a restaurant and hotel
consultant, has created a simple rustic pie made
with fresh berries of the season – strawberries,
raspberries and blueberries….
The Post-Standard (Syracuse, NY) August 18, 2004

LET SUMMER PROVIDE FRUIT FILLINGS
If you’re baking for two, make a small rustic
pie, one sheet of pie dough fitted into a 7- or
8-inch pan….
The Star Press (Muncie, Indiana) July 14, 2005

We note, however, that the examining attorney’s
requirement for a disclaimer of “RUSTIC PIES” was
conditional upon applicant’s amendment of the application
to the Supplemental Register. At no time did the examining
attorney issue a requirement that applicant disclaim
“RUSTIC PIES” aside from the context of his suggested
amendment to the Supplemental Register. Further, in his
brief the examining attorney does not argue, or even
discuss, such a requirement except in the statement quoted
from his brief above.2 Accordingly, the requirement that
applicant disclaim any portion of its applied-for mark is
not an issue on appeal.
As a result, the sole issue on appeal is the examining
attorney’s refusal to register the mark BONERTS RUSTIC PIES

2 Applicant asserts in its brief that it agreed by telephone to a
disclaimer of “PIES” but not “RUSTIC” and presents arguments
against such a requirement.

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pursuant to Section 2(e)(4) of the Trademark Act.
Applicant and the examining attorney have filed briefs on
the issue under appeal.
We reverse.
In addition, pursuant to Trademark Rule 2.142(g) we
will address the disclaimer of certain wording in
applicant’s mark at the end of this decision.
Evidentiary Matters
Before turning to the substantive ground for refusal,
we note that applicant has submitted several exhibits with
its brief. These exhibits consist of printed copies of
third-party registrations. We agree with the examining
attorney that these exhibits are untimely and, accordingly,
they have not been considered. See Trademark Rule 2.142(d)
(the record in the application should be complete prior to
the filing of an appeal). We note, however, that had we
considered these exhibits in our determination of the issue
on appeal, the result would be the same.
Surname Refusal
Section 2(e)(4) of Trademark Act precludes
registration of a mark which is “primarily merely a
surname” on the Principal Register without a showing of
acquired distinctiveness under §2(f) of the Act, 15 U.S.C.
§1052(f). We must decide on the facts of each case whether
Ser No. 76627189
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the mark at issue is “primarily merely a surname” under the
Act. See In re Etablissements Darty et Fils, 759 F.2d 15,
225 USPQ 652, 653 (Fed. Cir. 1985). The examining attorney
bears the initial burden to make a prima facie showing of
surname significance. See Id. If the examining attorney
makes that showing, then we must weigh all of the evidence
from the examining attorney and the applicant to determine
ultimately whether the mark is primarily merely a surname.
See In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB
1994). If there is any doubt, we must resolve the doubt in
favor of applicant. See In re Benthin Management GmbH, 37
USPQ2d 1332, 1334 (TTAB 1995).
In Benthin, the Board identified five factors, four of
which are relevant here, to consider in determining whether
a mark is primarily merely a surname: (1) the degree of
the surname’s “rareness”; (2) whether anyone connected with
applicant has the mark as a surname; (3) whether the mark
has any recognized meaning other than as a surname; and (4)
whether the mark has the “look and feel” of a surname. Id.
at 1332-33. Because BONERTS RUSTIC PIES is in standard
character form, we need not consider the fifth Benthin
factor here, that is, whether the manner in which the mark
is displayed might negate any surname significance.
Rareness
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With his final Office action, the examining attorney
provided a listing of 566 individuals having “Bonert” as a
surname, retrieved by a search of the Lexis/Nexis USFIND
computer database. With his first Office action, the
examining attorney submitted a listing from the same
database of 34 individuals having “Bonert” as a surname.
However, even if these are 34 different individuals from
the 566 listed in the final Office action, the total number
of persons with “Bonert” as a surname is 600.
As a result, on this record, we conclude that Bonert
is an extremely rare surname. In concluding so, we rely on
the fact that only 600 examples of the “Bonert” surname
were located from a comprehensive directory of the entire
United States. See In re Sava Research Corp., supra at
1381; and In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB
1987).
Applicant’s Surname Use
Applicant acknowledges that “the name of the person
signing Applicant’s application was its president, Michael
Bonert” (brief, p. 5). As a result, we find that “Bonert”
is the surname of someone connected with applicant.
Other Meanings
The examining attorney argues that BONERT has no
meaning other than as a surname and offers with his Office
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actions dictionary and encyclopedia evidence from
Dictionary.com, Microsoft Encarta, Merriam-Webster, One
Looks, Bartleby, and several other sources in support of
this position. Applicant asserts that “BONERTS RUSTIC PIES
will be synonymous to the purchasing public with
Applicant’s bakery goods, namely, pies, by virtue of its
use of the marks BONERTS and BONERTS SLICE OF PIE for pies
since 1993.” (brief, p. 5). However, and as noted above,
applicant has not submitted a claim of acquired
distinctiveness based either upon its ownership of its
prior registrations or upon any other basis. Nor has
applicant introduced any evidence that “BONERT” has any
other significance than that of a surname. We note
nonetheless the absence of evidence that any person with
the “Bonert” surname has achieved any notoriety. Cf. In re
Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004) (evidence of
public figures with surname Rogan found supported
conclusion that public would perceive Rogan as a surname).
Weighing all of the facts and the absence of evidence of
other meanings, we find that “Bonert” has no recognized
meaning or significance other than surname significance.
Look and Feel
Lastly we must consider whether “BONERTS” has the
“look and feel” of a surname. As to this factor, the
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examining attorney argues that BONERTS has the look and
feel of a surname because the evidence of record
established that the proposed mark does not have any
recognition other than that of a surname. Applicant
argues, instead, that “the word BONERTS in Applicant’s mark
BONERTS RUSTIC PIES does not have the structure or
pronunciation of a surname, especially given the addition
of the words RUSTIC PIES” (brief, p. 6).
We agree with the examining attorney that neither the
pluralization nor possessive form of “Bonerts” diminishes
its surname significance. See In re Woolley’s Petite
Suites, 18 USPQ2d 1810, 1812 (TTAB 1991). See also In re
McDonald’s Corp., 230 USPQ 304, 306 (TTAB 1986); and In re
Luis Caballero, S.A., 223 USPQ 355, 357 (TTAB 1984). We
further agree that the addition of the wording RUSTIC PIES
does not appreciably diminish the surname significance of
the mark. The term “PIES” clearly is generic for
applicant’s goods, identified in its application as “pies.”
In addition, based upon the examining attorney’s evidence
of record, the term “RUSTIC” appears to describe a type of
pie. Thus, taken together, the wording “RUSTIC PIES” is,
at best, descriptive of applicant’s goods.
However, we reject the examining attorney’s argument
that the mere fact that a term in a mark may not have any
Ser No. 76627189
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recognized meaning other than that of a surname imbues the
mark with the “look and feel” of a surname. As discussed
above, “Bonert” may not have a defined meaning; nonetheless
in a case such as this involving a very rare surname, we
cannot assume that the purchasing public will view the mark
as a surname based on exposure to the surname use. See In
re Garan Inc., supra at 1540. It is in the case of a rare
surname that we need to weigh “look and feel” carefully.
See In re Joint-Stock Company “Baik,” 84 USPQ2d 1921 (TTAB
2007). For example, certain surnames, though rare,
resemble common surnames “in their structure and
pronunciation.” See In re Industrie Pirelli Societa per
Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988). However, we see
insufficient evidence that such is the case with “Bonert.”
Cf. In re United Distillers plc, supra at 1221.
The examining attorney introduced evidence with the
final Office action from the Superpages.com computer
database to show that surnames such as “Bonner,” “Bonar,”
“Bonnet,” “Conner” and “Donner,” are similar in appearance
and sound to “Bonert.” We note, however, that such
evidence does not indicate the number of individuals with
such surnames. As such, we cannot determine from the
examining attorney’s evidence whether the extremely rare
surname “Bonert” is similar to surnames that are almost as
Ser No. 76627189
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rare, or more common. In addition, evidence from
OneLook.com submitted by the examining attorney with the
same Office action demonstrates that “Bonert” also is
similar in appearance and sound to such words as “boner,”
“bonnet,” “banter,” “burnet,” and “brunet.” Thus, we are
not convinced that the similarity of “Bonert” to other
surnames of unknown rarity somehow results in that term
having the “look and feel” of a surname, especially given
that “Bonert” also resembles a number of words in the
English language. In this case, there simply is
insufficient evidence that relevant purchasers would
perceive “Bonert” as a surname.
In sum, based on the record in this case, we conclude
that the examining attorney has failed to meet the burden
of establishing a prima facie case that “Bonerts” is
primarily merely a surname. Accordingly, we conclude that
BONERTS RUSTIC PIES is not primarily merely a surname.
Furthermore, and as noted above, we must resolve any doubt
in favor of applicant. See In re Benthin Management GmbH,
37 USPQ2d at 1334.
Decision: The refusal to register applicant’s mark on
the ground that it is primarily merely a surname is
reversed.
Ser No. 76627189
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Disclaimer
As noted above, the examining attorney submitted
evidence that the wording “RUSTIC PIES” in the applied-for
mark merely describes the identified goods. In addition,
both applicant and the examining attorney acknowledge that
they discussed disclaiming the wording “RUSTIC PIES” or
“PIES” over the telephone during prosecution of this
application, but were unable to reach agreement with regard
thereto.
It is settled that once an application has been
considered and decided by the Board on appeal, such
application generally may not be “reopened” for further
examination, except for the entry of a disclaimer under
Section 6 of the Trademark Act. See Trademark Rule
2.142(g); In re Petite Suites Inc., 21 USPQ2d 1708, 1710
(Comm’r 1991); and In re S.D. Fabrics, Inc. 223 USPQ 56, 57
n.1 (TTAB 1984). See also TBMP §1218 (2d ed. rev. 2004)
and the authorities cited therein. In this case, we find
that, based upon the evidence of record, the wording
“RUSTIC PIES” merely describes the applied-for goods and
must be disclaimed apart from the mark as shown. Such a
disclaimer will put the involved application in condition
for publication without further examination. See In re
S.D. Fabrics, Inc., supra.
Ser No. 76627189
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Accordingly, the involved application is hereby
remanded to the examining attorney for entry of the
disclaimer of “RUSTIC PIES” apart from the mark as shown.