Club Monaco Corp.

Trademark Trial and Appeal Board

Mar 12, 2003

No. 76029774 (T.T.A.B. Mar. 12, 2003)

Mailed: Paper No. 12
March 12, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Club Monaco Corp.
________
Serial No. 76029774
_______
Anthony F. Lo Cicero and Denise A. Lindenauer of Amster,
Rothstein & Ebenstein for Club Monaco Corp.
Regina C. Drummond, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).1
_______
Before Simms, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Applicant seeks registration of the term CABAN (in
typed form) for stainless steel flatware, namely, knives,
forks and spoons in International Class 8; sofas, chairs,
beds and ottomans in International Class 20; glass stemware,
glass beverageware, glass bowls, dinnerware, namely, plates,
1 Hellen M. Johnson handled examination of the application and
issued both the initial and final refusals. Ms. Drummond briefed
the appeal.
This Opinion is Not
Citable As Precedent of
the TTAB
Ser No. 76029774
2
cups, saucers and bowls in International Class 21; and
towels, sheets, pillow cases, pillow shams, bed skirts,
comforters, blankets, comforter and blanket covers, shower
curtains, linen table cloths and napkins, textile placemats
and fabrics for house wares in International Class 24.2 The
application is based on applicant’s statement that it has a
bona fide intention to use CABAN in commerce as a mark for
the identified goods.
The examining attorney has refused registration on the
ground that CABAN is primarily merely a surname, under
Section 2(e)(4) of the Lanham Act, 15 U.S.C. § 1052(e)(4),
and therefore is unregistrable on the Principal Register.3
When the refusal of registration was made final, applicant
appealed. Applicant included a request for reconsideration
with its notice of appeal. That was considered by the
examining attorney and denied. The appeal is fully
2 The Office’s computerized database of pending applications and
issued registrations, as well as the Office’s computerized search
system for pending and registered marks, list only “linen table
cloths and napkins” as goods in Class 24. It appears that
applicant’s request to amend the wording “table cloths and
napkins” to “linen table cloths and napkins” inadvertently led to
substitution of the latter for the entire Class 24 listing of
goods. The Board has remedied the error by restoring to the
listing all the other goods included in the original application.
3 Applicant was informed that it could amend the application to
the Supplemental Register upon filing of an allegation of use of
the term in commerce.
Ser No. 76029774
3
briefed. Applicant did not request an oral argument. We
affirm the refusal of registration.
The record includes a reprint of 100 of 816 telephone
listings for individuals with the surname CABAN, retrieved
from the PhoneDisc computerized database4, and reprints of
54 excerpts from among 2000 retrieved from the NEXIS
database of items published in newspapers and magazines, as
well as items posted on wire services.5 Applicant, in turn,
made of record (1) a declaration from its president and
CEO, attesting that none of applicant’s “officers,
directors, or senior level personnel” have the name
“Caban,” and (2) a French dictionary definition of “Caban”
as a “pea jacket,” “(hooded) cloak (for rainy weather),” or
“oilskins.” Applicant has also made of record the
following definition from the Oxford English Dictionary
(1989): “cabaan, caban … A white cloth worn by Arabs over
their shoulders”; the following from The New Shorter Oxford
English Dictionary (1993): “caban … A type of coat or tunic
4 With the initial Office action, the examining attorney reported
the results of her PhoneDisc search, stating that 816 residential
listings were found for the name CABAN and that the 100 listings
attached to the Office action were representative of the complete
search results.
5 The examining attorney searched for CABAN in the NEXIS “News”
library and “US” file. The search found 2000 stories, from which
the introduced excerpts were selected.
Ser No. 76029774
4
worn esp. by Arab men”; and the following definition from a
Russian-English dictionary: “kaбaн/kabán/ m. boar.”
The examining attorney has asked that we take judicial
notice of the absence of definitions for “caban” in four
dictionaries published in the United States and in two on-
line dictionaries. In support of this request, the
examining attorney provided reprints of pages from the four
published dictionaries, showing that “caban” does not
appear, and reprints of the results from searches of the on-
line dictionaries, showing that neither search returned a
result for “caban.”
In deciding whether a term is or is not primarily
merely a surname, we must determine the primary
significance of the term to the purchasing public. See In
re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238 (CCPA
1975). The Office, through the examining attorney, bears
the burden of establishing a prima facie case in support of
the conclusion that the primary significance of the term to
the purchasing public would be that of a surname. If the
prima facie case is made, then the burden of rebutting that
case, i.e., the burden of showing that the primary
significance of the term to the purchasing public is other
than as a surname, shifts to the applicant. See In re
Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652
Ser No. 76029774
5
(Fed. Cir. 1985); In re Harris-Intertype Corp., supra; In
re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ
421 (CCPA 1975); In re Pyro-Spectaculars, Inc., 62 USPQ2d
355 (TTAB 2002); In re Rebo High Definition Studio Inc., 15
USPQ2d 1314 (TTAB 1990).
Factors to be considered in determining whether a term
is primarily merely a surname include: (i) the rarity of
use of the term as a surname; (ii) whether anyone connected
with applicant has the surname in question; (iii) whether
the term in question has any recognized meaning other than
that of a surname; (iv) whether the term has the “look and
sound” of a surname; and, if applicable, (v) whether the
stylization of the term is so great as to create a separate
commercial impression sufficient to render the term more
than merely a surname. In re Benthin Management GmbH, 37
USPQ2d 1332 (TTAB 1995).
The examining attorney bases her argument in support
of the refusal on the PhoneDisc evidence, the NEXIS
evidence, and her inability to find dictionary definitions
for the term “caban.” She also argues that possible
meanings for the term in languages other than English are
irrelevant, that the Oxford English dictionaries’
definitions are obscure, and that applicant has not
provided any explanation of the creation or adoption of the
Ser No. 76029774
6
term so as to establish that is coined rather than a
surname.
The applicant, on the other hand, argues that the
PhoneDisc listings are “negligible” when compared to the
total number of listings in that database, that the term
has been shown to have another meaning in English, has
still additional meanings in other languages, is not the
name of any officer, director or senior level personnel of
applicant, and does not have the “look and sound” of a
surname. Applicant also argues that, because of the nature
of applicant’s goods, “caban” would “conjure up” the term
“cabana.”
We find that the examining attorney has carried her
burden of making out a prima facie case for refusal. The
PhoneDisc and NEXIS evidence show that Caban is a surname
in use throughout the United States. The PhoneDisc
listings made of record show individuals with the name
Caban from New England and Mid-Atlantic states, in Florida
and other southern states, in Oklahoma, Texas and Arizona,
and in California, Washington and Hawaii. Likewise, the
NEXIS evidence shows the surname appearing in articles in
publications throughout the United States, including
Boston, Worcester, Quincy (Mass.), Manchester (N.H.),
Hartford, Albany (N.Y.), Buffalo, New York, Neptune (N.J.),
Ser No. 76029774
7
Allentown, Lancaster (Penn.), Fort Lauderdale, Orlando,
Sarasota, St. Petersburg, Tampa, Vero Beach, Atlanta,
Louisville, South Bend, Chicago, Milwaukee, Dallas, San
Antonio, and Los Angeles. That the PhoneDisc references
may be a very small percentage of that database, or that
the NEXIS references may be a very small percentage of the
population of the United States, is not very significant.
A great many surnames might, when compared to a database of
nearly 100 million (by applicant’s estimate) or the
population of the United States, be used by only very small
percentages of the larger groups.
In regard to the dictionary evidence of record, the
meaning of “caban” in French or Russian is of little
relevance to our inquiry, for our focus is on the
significance of the term to purchasers in the United
States, not in France or Russia. Even assuming that these
definitions would have significance for our inquiry, we
note that the Russian definition applicant relies on is
actually for the term “kaban” not “caban” and that the
French definition is qualified with the designation
“(Naut.)” which, we presume, signifies a nautical term that
may not be widely known even to those who speak French. In
addition, we agree with the examining attorney’s
characterization of the definition of “caban” in the Oxford
Ser No. 76029774
8
English dictionaries as obscure, in view of the absence of
any definition for the term whatsoever in numerous other
dictionaries published in the United States, or available
here via the Internet.
That no officers, directors or senior employees of
applicant have the surname Caban is certainly a factor in
applicant’s favor. However, it is the only factor we find
to favor applicant. While applicant argues that Caban does
not have the “look and sound” of a surname, we disagree.
It is not presented in any form of stylization, so it does
not have the look of a symbol or design mark, and would not
be perceived as an acronym. Compare In re Sava Research
Corp., 32 USPQ2d 1380 (TTAB 1994) (SAVA found to have the
“look and sound” of an acronym). Nor is there anything in
the record from which we could find that Caban would
routinely be pronounced in such a manner as to possess non-
surname significance. Finally, we are not persuaded by
applicant’s argument that prospective purchasers of its
goods would consider Caban to be a shortened form of
Cabana, an argument which, we note, runs counter to
applicant’s argument that Caban would be perceived as a
coined term.
In short, we find that the examining attorney has
established a prima facie case for refusal and that
Ser No. 76029774
9
applicant has not rebutted that case. Had we any doubt on
the matter, we would resolve doubt in favor of applicant,
Benthin Management, supra, but we have no doubt that Caban
would be perceived primarily as a surname.
Decision: The refusal of registration under Section
2(e)(4) of the Lanham Act is affirmed.