Hall Wines, LLC

Trademark Trial and Appeal Board

Feb 10, 2009

No. 78926151 (T.T.A.B. Feb. 10, 2009)

Mailed: February 10, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hall Wines, LLC
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Serial No. 78926151
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Tsan Abrahamson of Cobalt LLP for Hall Wines, LLC.

Chrisie Brightmire King, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
_______

Before Kuhlke, Cataldo, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Hall Wines, LLC (applicant) has filed an application
to register the mark BERGFELD on the Principal Register in
standard character form for “wine” in International Class
33.1
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.

1 Serial No. 78926151, filed July, 7, 2006, based on a statement
of first use anywhere and in commerce on September 30, 2006.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78926151
2
§1052(e)(4). When the refusal was made final, applicant
filed a request for reconsideration which the examining
attorney rejected. Applicant then appealed; both applicant
and the examining attorney have filed briefs on the case,
including a reply brief filed by applicant.
We reverse the 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 Section 2(f) of the Act, 15
U.S.C. §1052(f). We must decide on the facts of each case
whether 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 “are inclined
to resolve such doubts in favor of applicant.” See In re
Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995).
Serial No. 78926151
3
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 sound” of a surname.
Id. at 1332-33.2
We first look at the “rareness” of the surname.
During the prosecution, the examining attorney submitted
search results from Lycos People and Lexis/Nexis P-Find
databases indicating, respectively, 280 and 300 telephone
book listings for individuals with the surname BERGFELD in
the United States.3 The examining attorney points out that
the listings are not concentrated in any one region, but
identify individuals in nineteen geographically dispersed
states. The examining attorney also submitted printouts
from internet websites showing commercial use of “Bergfeld”
as a surname. For example, there is a website advertising

2 The fifth Benthin factor, whether the manner in which the mark
is displayed might negate any surname significance, is not
relevant to our analysis inasmuch as applicant seeks registration
of BERGFELD in standard character form.
3 Only the first ten listings from the Lycos People search were
attached to Office Action dated December 7, 2006. The first one
hundred listings from the Lexis/Nexis P-Find search were attached
to the Office Action dated October 15, 2007.

Serial No. 78926151
4
“Bill Bergfeld Companies...for Success...,” a consulting
company involved in “teach[ing] teachers to teach teachers
to teach”;4 a “Bergfeld Realty Co.” website stating that
“Andy Bergfeld has represented a wide variety of clients in
virtually all fields of commercial real estate”;5 a website
identifying an actress “Laura Bergfeld”;6 and a website
advertising “Bergfeld Recreation, Inc.,” described as a
“family owned and operated” playground equipment company
with “Chuck Bergfeld” as its president and CEO.7
The examining attorney ultimately concedes that
“Bergfeld” is rare surname. Brief, (unnumbered) p. 3.
Applicant, on the other hand, contends that “Bergfeld”
is an “extremely rare surname.” Brief, p. 6. Applicant
correctly points out that the number of individuals with
this surname presented by this record is even lower in that
a perusal of the Lexis/Nexis P-Find database list provided
by the examining attorney contains duplicate entries, i.e.,
there are several individuals listed with the same first
name and living at the same address.8 Applicant also

4 Attached to Office Action dated May 6, 2008.
5 Id.
6 Id.
7 Attached to Office Action dated October 15, 2007.
8 Compare listings nos.: 1 with 2; 9 with 10; and 67 with 68.
We further note, that because the examining attorney only
provided a partial listing (for the first one hundred), there is
certainly the possibility that more duplicative entries exist.

Serial No. 78926151
5
submitted evidence putting the rarity of the surname into
perspective. Specifically, applicant submitted U.S. Census
Bureau statistics showing that the surname “Bergfeld” ranks
20391st in the United States in frequency.9
We find, based on the evidence, that BERGFELD is an
extremely rare surname. Although the examining attorney
submitted evidence showing use of the surname “Bergfeld” in
commerce by different individuals, she was only able to
produce evidence indicating there are fewer than 300
individuals with that surname after searching two
comprehensive databases. See In re Sava Research Corp.,
supra at 1381; and In re Garan Inc., 3 USPQ2d 1537, 1540
(TTAB 1987).
Before leaving this factor, we acknowledge the history
of the Board’s treatment of surname refusals and take into
account the number of listings before us for the surname
“Bergfeld.” There are many Board decisions where we found
a term to be a rare surname, yet unregistrable, based on
fewer surname listings than we have here. Conversely,
there are many Board decisions allowing a term to be
registered despite more surname listings than what we have
here. In other words, there remains no threshold number of

9 From printouts obtained from U.S. Census Bureau; attached to
applicant’s response dated July 24, 2007.
Serial No. 78926151
6
surname listings upon which we base our decisions. 10
However, we believe it is important to accord the proper
weight to the “rareness” of the surname factor while
keeping in mind the purpose of Section 2(e)(4) of the Act.
As explained by Judge Seeherman in her concurrence in In re
Joint-Stock Company “Baik”, 84 USPQ2d 1921 at 1924 (TTAB
2007), the “purpose behind prohibiting the registration of
marks that are primarily merely surnames is not to protect
the public from exposure to surnames,... Rather, the
purpose behind Section 2(e)(4) is to keep surnames
available for people who wish to use their own surnames in
their businesses...” Moreover, “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.” Id. (in main opinion) at
1923-4, citing In re Garan Inc., supra at 1540.
We turn next to the second factor and look to whether
anyone associated with applicant has the surname
“Bergfeld.” There is no dispute that applicant’s proposed
mark ultimately derives from Robert Bergfeld who, according

10 We do note, however, that the electronic databases available to
examining attorneys today are far more comprehensive and current
than the reference materials available in the past; thus, we can
presume that the number of persons listed (absent duplicative
entries) is a fairly accurate estimation of the number of
individuals with the surname in the entire United States.

Serial No. 78926151
7
to applicant’s website, was a “pioneering wine grower who
owned our historic winery from 1894 until 1910.”11 However,
applicant has submitted several advertisements for its wine
indicating that the mark’s significance derives from the
historic winery building on the property, known as the
“Bergfeld” building. Applicant further uses a wine label
(affixed to the wine bottle) containing a depiction of the
“Bergfeld” building. Thus, even taking into consideration
that applicant’s mark historically derives from the surname
of the person who owned the property nearly one hundred
years ago, we find that consumers may be just as likely to
attribute non-surname significance to the mark. Further,
no one presently (or ever) associated with applicant has
the surname “Bergfeld” and applicant has stated
unequivocally that there is no such connection. Thus, to
the extent that there is no one associated with applicant
bearing the name “Bergfeld,” we do not weigh this factor in
favor of a finding that the mark is primarily a surname.
The third factor is whether there is another
recognized meaning for “Bergfeld.” The relevant question
is whether the term has another recognized significance

11 Attached as exhibit C to applicant’s response dated July 24,
2007. Other evidence regarding Mr. Bergfeld is contained in
applicant’s response dated April 15, 2008.

Serial No. 78926151
8
other than as a surname. As noted above, applicant
contends that “Bergfeld” will be understood as referencing
the historic building called the “Bergfeld” that is located
on its property. However, we have little evidence
indicating the extent of the “Bergfeld” building’s
recognition. Thus, while applicant has shown that
“Bergfeld” may be used to reference the historic winery
building, there is no evidence as to the degree of
familiarity of the building. Applicant has also argued
that “Bergfeld” has non-surname meaning because the terms
“berg” and “feld” have meaning in German (“hill” and
“field,” respectively). This argument is less persuasive
because there is no indication that the term “Bergfeld”, as
a whole, has an understood meaning in German that can be
translated into English. Cf., In re Isabella Fiore LLC, 75
USPQ2d 1564, 1569 (TTAB 2005) (Board concluded that “there
is no question of whether the term [FIORE] would be
recognized in its current form as the Italian word for
‘flower.’”)
Finally, as to the fourth factor, namely, whether the
proposed mark has the “structure and pronunciation” (or,
stated differently, the “look and sound”) of a surname, the
examining attorney argues that it does and submitted
evidence of other surnames that either begin with “berg” or
Serial No. 78926151
9
end with “feld,” and a one-page printout from a website
(“alt.gossip.royalty”) containing a posting, “How to
recognize Jewish names,” and listing “names ending ‘-
feld’.” Applicant, on the other hand, contends that its
mark is “reminiscent of a city name..., e.g., Hatfeld,
Heidelberg, Hardfeld, Bonfeld and Heimfeld.” Brief, p. 8.
Based on the evidence and arguments on this very subjective
factor, we are unable to make any definitive determinations
as to whether applicant’s mark has the “look and sound” of
a surname. Instead, we believe that while some may
perceive applicant’s mark as a surname, it is perhaps just
as likely that others will view the mark as identifying a
city or town or ascribe some other geographic significance
thereto.
In balancing the aforementioned factors, we make no
secret that the first factor, rareness of the surname, has
been given much more weight than the other three factors.
And, in doing so, we find that any slight tilt toward
finding the mark as being primarily a surname based on the
other factors is outweighed by the fact that there are
fewer than 300 persons with the surname “Bergfeld.”
Ultimately, we conclude that applicant’s proposed mark,
BERGFELD, is so rarely used as a surname, and that the
remaining Benthin factors provide little additional support
Serial No. 78926151
10
for a finding that it would be so perceived by consumers,
that it is not primarily merely a surname. Furthermore, to
the extent we had any doubt in our decision and weighing
these factors, we resolve such 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.