Lockton Companies, Inc.

Trademark Trial and Appeal Board

Nov 13, 2006

No. 78461678 (T.T.A.B. Nov. 13, 2006)

Mailed: November 13, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lockton Companies, Inc.
________

Serial No. 78461678
_______

Chad W. Brigham of Lewis, Rice & Fingersh, L.C. for Lockton
Companies, Inc.

Robert J. Lavache, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Hairston, Walters and Drost, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Lockton Companies, Inc. has filed an application to
register the mark ABANTE (standard character form) for
services ultimately identified as:
human resources consultation; employee benefit
plan account auditing services; conducting
business research and surveys for human resources
and employee benefits purposes in International
Class 35;

employee benefits consultation, namely, employee
benefit plan analysis services; employee benefit
plan administration services; providing financial
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78461678
2
information, namely, financial data reporting in
the field of employee benefit plans; and
financial analysis, namely, benchmarking in the
nature of measuring the financial performance of
employee benefit plans in International Class 36;

electronic data transmission for human resources
and employee benefit professionals and employers
in International Class 38; and

compliance services, namely, reviewing standards
and practices to assure compliance with employee
benefit laws and regulations in International
Class 42.1

Registration has been finally refused under Section
2(e)(4) of the Trademark Act on the ground that the mark
applicant seeks to register is primarily merely a surname.
Applicant has appealed. Applicant and the trademark
examining attorney have filed briefs, and applicant filed a
reply brief. We affirm the refusal to register.
The initial burden is on the examining attorney to
establish a prima facie case that a mark is primarily
merely a surname. If a prima facie case is established,
the burden then shifts to the applicant to rebut the
showing made by the examining attorney. The question of
whether a term sought to be registered is primarily

1 Serial No. 78461678, filed August 4, 2004, alleging dates of
first use and first use in commerce of July 15, 2004.
Ser No. 78461678
3
merely a surname may only be resolved on a case by case
basis. See In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d
1939 (TTAB 1993).
The factors to be considered in determining whether a
term is primarily merely a surname are the following:
(1) The degree of a surname’s rareness;

(2) Whether anyone connected with the applicant
has that surname;

(3) Whether the word has any recognized meaning
other than that of a surname; and

(4) Whether the word has the look and sound of a
surname.2

See In re Benthin Management GmbH, 37 USPQ2d 1332

(TTAB 1995).

The examining attorney maintains that he has submitted
sufficient evidence to make a prima facie case that the
primary significance of the mark ABANTE to the purchasing
public for applicant’s services is that of a surname and
that such showing has not been rebutted by applicant.
Applicant argues, however, that the examining attorney
erred in finding that the mark is primarily merely a
surname because:

2 A fifth factor, not present in this case, concerns whether a
mark which is presented in a stylized form is distinctive enough
to create a separate non-surname impression.
Ser No. 78461678
4
(i) the Trademark Attorney located a very small
amount of individuals who had the surname
“Abante” in the massive nationwide databases he
researched, which showed that the surname is
rare, (ii) Applicant’s Mark has other recognized
meanings, as it is the Latin root for “advance”
or “advantage,” as evidenced by the dictionary
definitions that Applicant attached thereto,
(iii) “Abante” is not the surname of anyone
connected with Applicant, (iv) “Abante” does not
have the “look and feel” of a surname, but
rather, Applicant’s Mark has the look and feel of
[a] non-English term (i.e., Latin or Spanish),
(v) the public and the United States Patent and
Trademark Office (the “PTO”) have already
acknowledged the trademark significance of
ABANTE, as evidenced by two prior registrations
that the Trademark Attorney cited in Office
Action No. 1 and (vi) all doubt as to the
surname significance of Applicant’s Mark must be
resolved in favor of Applicant. (Brief at 3).

In this case, we agree with the examining attorney
that the record contains sufficient evidence to make a
prima facie case that the primary significance of the mark
ABANTE to the purchasing public for applicant’s services is
that of a surname and that such showing has not been
rebutted by the applicant. The examining attorney
submitted evidence that a search of the LexisNexis (“EZFIND
Combined Person Locator Nationwide”) database returned 355
residential listings of individuals with the surname
“Abante” (a printout of 311 of the retrieved listings was
included); 8 article excerpts from the LexisNexis (“News”)
database, each of which refers to an individual with the
surname “Abante;” evidence that 16 “matches” for
Ser No. 78461678
5
individuals with the surname “Abante” were found in a
search of the “Peoplefinders.com” website, 14 matches were
found in a search of the “Yahoo! People Search.com”
website, and 10 matches were found in a search of the
“switchboard.com” website; and printouts from several on-
line dictionaries that show no entries for the word
“abante.”
Applicant argues that of the more than 300 residential
listings and “matches” submitted by the examining attorney,
only 82 distinct individuals with the surname “Abante” are
represented therein; and that these 82 individuals
constitute a miniscule portion of the United States
population of 295,734,134, as shown by the July 2005
edition of The World Factbook. Thus, it is applicant’s
position that the “Abante” surname is extremely rare.
We acknowledge that a substantial number of the
residential listings and matches are “duplicates,” such
that the number of distinct individuals with the surname
“Abante” is certainly closer to 82 than 300. Although the
record shows that ABANTE is indeed a rare surname, it is
nonetheless the case that even a rare surname is
unregistrable (absent a showing of acquired
distinctiveness) “if its primary significance to purchasers
is that of a surname.” See, e.g., In re Etablissements
Ser No. 78461678
6
Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985).
Further, this Board has “declined to hold that a minimum
number of telephone listings is necessary to establish a
prima facie surname significance case.” See, e.g., In re
Petrin Corp., 231 USPQ 902, 903 (TTAB 1986). See also In
re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004)(no “per se
benchmark” as to minimum number of listings); and In re
Petrin Corp., supra. We find, therefore, that the searches
of the LexisNexis database and other websites, when coupled
with the 8 article excerpts from the LexisNexis database
and the “negative” dictionary evidence, are sufficient to
establish the surname significance of the mark ABANTE to
the relevant purchasing public. In sum, the Board finds
that the examining attorney’s evidence is sufficient to
establish a prima facie showing.3
Applicant notes that this Board has held that the fact
that a term is the surname of an individual associated with
the applicant is strong evidence of the surname
significance of the term. See e.g., In re Industrie

3 Indeed, the evidence in this case, is significantly greater
than in other cases where the surname has been categorized as
“rare.” See e.g. In re Kahan & Weisz Jewelry Mfg. Corp., 508
F.2d 831, 184 USPQ 421 (Fed. Cir. 1975) (six DUCHARME surname
telephone listings); and In re Garan, Inc., 3 USPQ2d 1537 (TTAB
1987) (six GARAN telephone directory listings and one LexisNexis
listing).
Ser No. 78461678
7
Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988). In
view thereof, applicant argues that where as here, no one
associated with applicant has the surname “Abante,” this
factor weighs heavily in applicant’s favor.
However, contrary to applicant’s contention, the Board
has stated that the fact that “a proposed mark is not the
applicant’s surname, or the surname of an officer or
employee, does not tend to establish one way or the other
whether the proposed mark would be perceived as a surname.”
In re Gregory, supra at 1795. Thus, the fact that no one
associated with applicant has the surname “Abante” does not
favor applicant, but rather is a neutral factor in this
case.
Applicant also contends that its mark has meaning
other than as a surname. According to applicant,
“‘[a}bante’ is the Latin root for the English term
‘advance.’” (Brief at 7). Applicant submitted the results
of searches of “en.wiktionary.org;” and “merriam-
webster.com” for the words “advance” and “vanguard,” the
pertinent portions of which are reproduced below:
advance
English
Etymology
From Old French avancer (French avancer) from
late Latin abante, from ab + ante ‘before.’ The
spelling with d was a mistake, a- being supposed
Ser No. 78461678
8
to be from Latin ad. Avaunt is an earlier form
of the same source-word.
(en.wiktionary.org)
vanguard
Etymology: Middle English vantgard, from Middle
French avant-garde, from Old French, from avant-
fore- (from avant before, from Late Latin abante
+ garde guard - more at ADVANCE
(merrian-webster.com)

advance
Etymology: Middle English advauncen, from Old
French avancier, from (assumed) Vulgar Latin
abantiare, from Late Latin abante in front, from
Latin ab- + ante before – more at ANTE-
(merriam-webster.com)

Although we acknowledge that the term “abante” has
significance as a Latin term, we doubt the purchasing
public would know of this significance. We note that
applicant has made of record a printout of its Internet
homepage where the following information about the term
“abante” is set forth.
Abante (ah-BAHN-tay) from 15th century, Late
Latin.
Modern word: Advantage.4

- A superior position resulting from factors of
benefit to its possessor.
- A benefit resulting from course of action.

4 Although applicant initially argued that “abante” is also the
Latin term for “advantage,” applicant offered no dictionary
evidence to support its contention in this regard. In view
thereof, and because applicant did not pursue this particular
argument, we have given it no consideration.
Ser No. 78461678
9
To us, this is an indication that the significance of
“abante” as a Latin term is obscure since applicant
considered it necessary to apprise the purchasing public of
this meaning at its Internet homepage. In short, we are
not persuaded that the term “abante” has any other
recognized meaning. Thus, it is the surname significance
of “Abante” which dominates and, therefore, this factor
favors a finding that the mark ABANTE is primarily merely a
surname.
Further, applicant contends that its mark does not
have the “look and feel” of a surname. The examining
attorney has submitted evidence that searches of the
“switchboard.com” website returned 100 matches for
individuals with the surname “Amante;” 100 matches for
“Asante;” 100 matches for “Assante,” 7 matches for
“Adante,” and 10 matches for “Arante.” It is clear that
ABANTE is very much like these surnames having an “-ante”
suffix. In view thereof, and while admittedly a subjective
determination, it is our view that ABANTE has the “look and
feel” of a surname.
Two additional arguments made by applicant require
comment. In his initial Office Action, the examining
attorney also refused registration of applicant’s mark
under Section 2(d) of the Trademark Act, citing two
Ser No. 78461678
10
registrations owned by the same entity, namely,
Registration No. 2317098 for the mark ABANTE and
Registration No. 2306488 for the mark ABANTE PROGRESSION,
both for ”computer software used to track and manage group
and individual performance in education, business or sports
environments.” Applicant argues that these registrations
show that the “PTO [has] appropriately given the mark
ABANTE trademark significance in the past with respect to
unrelated goods.” (Brief at 11).
This argument does not persuade us to reach a
different result herein. It is well settled that each case
must be decided on its own set of facts, and we are not
privy to the facts involved with these registrations. See
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001) [“Even if prior registrations had
some characteristics similar to [applicant’s] application,
the PTO’s allowance of such prior registrations does not
bind the Board or this court.”]
Finally, applicant is correct that our case law holds
that if we have doubts about whether the term is a surname,
we resolve them in favor of the applicant for publication
of the mark. In re United Distillers plc, 56 USPQ2d 1220
(TTAB 2000). In this case, we have no such doubts.
Ser No. 78461678
11
Decision: The refusal to register applicant’s mark on
the ground that it is primarily a surname is affirmed.