Locman S.p.a.

Trademark Trial and Appeal Board

Feb 1, 2007

No. 79006905 (T.T.A.B. Feb. 1, 2007)

Mailed: February 1, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Locman S.p.a.
________

Serial No. 79006905
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Kathleen A. Costigan of Hedman & Costigan, P.C. for Locman,
S.p.a.

Gina M. Fink, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Hairston, Zervas and Mermelstein, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Locman S.p.a. (an Italian corporation) has filed an
application to register the mark MANTOVANI (standard
character form) for goods ultimately identified as: 1
Clocks; clocks in general; watches, not
wristwatches; casings for clocks; ribbon fobs for
watches and pocket watches; watchbands; jewelry
and wristwatches and pocket watches; clocks and
chronometric instruments, namely, chronometers,

1 Serial No. 79006905, filed April 22, 2004, based on an
International registration, Registration No. 837695, under the
provisions of the Madrid Protocol.
THIS DISPOSITION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 79006905
2
small watches, wristwatches, dial trains for time
pieces; dials for clock and watch making;
clockworks, namely, parts for clocks; dial trains
for clockwork mechanisms; chronometers; sun
dials; gear-trains for clock and watch making,
clock hands for clock and watch-making, works of
art, namely, figures, sculptures of precious
metal; table plates of precious metal; pendulums
for clock and watch making, barrels for clock and
watch making, fastening chains for clocks,
chronographs for use as clocks, chronoscopes,
jewelry; cigar and cigarette cases of precious
metal; tea caddies of precious metal; earrings,
ornaments of precious metal; candlesticks of
precious metal; tea caddies of precious metal;
mesh bags of precious metals; cuff links;
bracelets being jewelry, pendants, ampules of
precious metal; busts of precious metal; glove
compartments of precious metal, coffee services
of precious metal, non-electric coffeepots of
precious metal, candelabra of precious metal,
candle holders made of precious metal,
nutcrackers of precious metal, ashtrays of
precious metal for smokers, fob chains being
jewelry, cigar and cigarette holders for smoking
purposes of precious metal,cigar chests of
precious metal, jewelry boxes of precious metal,
necklaces being jewelry, egg frames of precious
metal, canisters for household use made of
precious metal, tie clips, tie pins, small
brooches of precious metal, diamonds, plated
articles, namely, jewelry of precious metal,
jewelry caskets of precious metal, chests for
clocks, pins being jewelry, decorative and
ornamental pins, needle holders of precious
metal, cigar and cigarette holders of precious
metal, clock cases, statuettes of precious metal,
threads of precious metal being jewelry, filters
for tea of precious metal, flasks of precious
metal, trimmings for harnessing of precious
metal, stemless glasses of precious metal, coupes
made of precious metal, clocks, atomic clocks,
electric clocks, oil cruets of precious metal,
signboards of precious metal, iridium, ornaments
made of ivory, rough or semi-processed black
amber, tokens made of copper being jewelry,
ingots of precious metal, medals, medallions
Ser No. 79006905
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being jewelry, oil cruet sets of precious metal,
unwrought or semi-wrought precious metals,
collectible, commemorative coins, wristwatches
and pocket watches; olivine, namely, precious
stone; gold thread being jewelry, unwrought or
beaten gold, hair ornaments of precious metal,
ornaments made of black amber, osmium, palladium,
ornaments being jewelry, ornaments made of
silver, shoe ornaments of precious metal, tea
strainers of precious metal, strainers of
precious metal; wall clocks, pearls being
jewelry; precious articles, namely, jewels,
namely semi-precious stones, precious stones,
cabarets in the nature of trays of precious metal
for domestic purposes, platinum metal, dishes of
precious metal, pepper pots of precious metal,
match holders of precious metal, cigar and
cigarette holders of precious metal, fancy key
rings of precious metal; toothpick holders of
precious metal, coin purses of precious metal,
napkin holders of precious metal, tobacco tins of
precious metal, powder compacts of precious
metal, containers for household and kitchen use
of precious metal, springs for clocks, alarm
clocks, rhodium, rings for napkins of metals,
rings for napkin holders of precious metal,
ruthenium, salad bowls of precious metal, salt
shakers of precious metal, objects of imitation
gold, saucers of precious metal, soup bowls of
precious metal, spinel, namely, precious stones,
figures of precious metal, statuettes of precious
metal, paste jewelry, sugar bowls of precious
metal, coasters for glasses of precious metal,
snuff boxes of precious metal, cups of precious
metal, tea services of precious metal, teapots of
precious metal, urns of precious metal; kitchen
utensils of precious metal, namely, pot and pan
scrapers, rolling pins, spatulas, turners,
whisks; pots of precious metal, glasses for
clocks in International Class 14; and

Bags, namely, all purpose sport bags, all purpose
carrying bags, all purpose athletic bags, beach
bags, belt bags, book bags; handbags; suitcases;
backpacks; wallets; coin purses; briefcases;
attache cases of skin and skin substitutes;
pouches of leather, drawstring pouches, felt
Ser No. 79006905
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pouches; trunks; animal skins, shopping bags made
of skin; leather goods made of skin, namely,
leather briefcases, leather cases for keys,
leather for shoes, leather handbags, leather
purses, leather shopping bags, pouches of
leather, traveling bags, traveling cases of
leather; animal skin and leather imitations made
thereof; parasols; beach parasols; umbrellas;
walking sticks; harnessing trimmings, namely,
animal harnesses, bits, leather for harnesses and
other saddlery articles, namely, saddlery of
leather in International Class 18.

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
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:
Ser No. 79006905
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(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).

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
MANTOVANI to the purchasing public for applicant’s goods is
that of a surname and that such showing has not been
rebutted by applicant. Specifically, the examining
attorney furnished evidence that a search of the LexisNexis
(“USFIND Person Locator-Nationwide”) database returned 153
residential listings of individuals with the surname
“Mantovani” (a printout of 99 of the retrieved listings was
included); the results of a “Google” search for “mantovani”
which returned “hits” or website links for Annunzio Paolo
Mantovani; Al Mantovani & Sons; Bráulio Mantovani; Maria
Domenica Mantovani; and Luiz Mantovani; and an entry in

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. 79006905
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Wikipedia, an online encyclopedia, for “Mantovani”
[Mantovani, born Annuzio Paolo Mantovani (November 15,
1905-March 29, 1980 was a popular conductor and entertainer
in the “easy listening style.”]. In addition, the
examining attorney submitted printouts from several on-line
dictionaries that show no entries for the word “mantovani,”
and a third-party registration, Registration No. 2577602
for the mark MANTOVANI for sauces, condiments and spices,
which issued under Section 2(f).
Applicant, with respect to its position, submitted a
page from the Manhattan “White pages” showing two
residential listings for persons with the surname
“Mantovani,” and a printout from the U.S. Census Bureau
website estimating the U.S. population at approximately 296
million. Applicant argues that the evidence of record
shows that “Mantovani” is only very rarely used as a
surname.
Although the record shows that MANTOVANI 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
Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985).
Ser No. 79006905
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Further, this Board has held that “there is no minimum
number of directory listing required to establish a prima
facie case” in support of a surname refusal. In re
Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566
(TTAB 1988). 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., 231 USPQ 902 (TTAB
1986).
We find, therefore, that the searches of the
LexisNexis database and “Google,” the Wikipedia entry, and
the “negative” dictionary evidence, are sufficient to
establish the surname significance of the mark MONTAVANI to
the relevant purchasing public. In sum, the Board finds
that the examining attorney’s evidence is sufficient to
establish a prima facie showing.
Further, 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 Pirelli Societa per
Azioni, supra. In this case, applicant acknowledges that
“Mantovani” is the name of a principal of applicant.
(Brief at 5). In this regard, the examining attorney
submitted printouts from applicant’s website which state
“LOCMAN Italy - Founded in 1986 by Marco Mantovani, LOCMAN
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watch brand has been on the cutting edge of design and
style, sparking trends with its innovative timepieces.”
The fact that “Mantovani” is the surname of applicant’s
founder weighs heavily in favor of a surname finding.
Applicant also contends that its mark has meaning
other than as a surname. Specifically, applicant argues
that “[Mantovani] is both the name of a principle [sic] of
the Applicant corporation and a registered trademark of the
Applicant corporation. The mark has been registered in the
European Community Trademark Office.” (Brief at 5).
However, contrary to applicant’s argument, and as noted
above, 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. Further, the fact that
applicant has registered the term MANTOVANI in the European
Community Trademark Office does not serve to establish that
the term has another recognized meaning as contemplated by
the third Benthin factor. In considering this factor, the
Board has looked to whether there is evidence that the term
has any other meaning in English or another language or if
it is an acronym. See e.g. In re Monotype Corp., 14 USPQ2d
1070 (TTAB 1989) [The Board considered the fact that
CALISTO was the variant spelling of the Greek mythological
nymph “Callisto” in determining that the term was not
Ser No. 79006905
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primarily merely a surname]; In re Sava Research Corp., 32
USPQ2d 1380 (TTAB 1994) [The Board considered the
applicant’s argument that the term SAVA was an acronym for
“Securing America’s Valuable Assets” in determining that
the term was not primarily merely a surname]; and In re
Isabella Fiore LLC, 75 USPQ2d 1564 (TTAB 2005) [The Board
considered the fact that the term FIORE means “flower” in
Italian in determining that the term was not merely a
surname]. In this case, there is no evidence that
MANTOVANI has another recognized meaning, and in the
absence thereof, this factor favors a finding that the mark
MANTOVANI is primarily merely a surname.
Further, applicant contends that its mark lacks the
“look and feel” of a surname. The examining attorney,
however, argues that MANTOVANI looks and sounds like an
Italian surname, and that it is similar to the surname,
“Montovani.” The examining attorney submitted evidence
that a search of the LexisNexis (“USFIND Person Locator-
Nationwide”) database returned 29 residential listings of
individuals with the surname “Montovani.” The record here
shows that “Mantovani” is, in fact, a surname. It the
surname of applicant’s founder. Under this admittedly
subjective factor, we find that “MANTOVANI” has the
structure and sound of a surname of Italian heritage.
Ser No. 79006905
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Two additional arguments made by applicant require
comment:
Again the Applicant submits that this mark is
known to the purchasing public as the identifying
mark of a line of quality merchandise. In
particular, MANTOVANI watches are well known to
the purchasing public.

Applicant also submits that, in the world of
design, it is common for the designer to use one
or both names to mark their goods. The
purchasing public has come to accept the
trademarks, ARMANI, MISSONI, DOLCE & GABBANA,
TRUSSARDI and VERSACE.
(Brief at 4).

In support of these arguments, applicant has offered
printouts from an Internet website at which its watches are
sold, and copies of seven third-party applications and
three third-party registrations for such marks as ARMANI,
GORGIO ARMANI, MISSONI and design, DOLCE & GABBANA,
TRUSSARDI and design and VERSACE, each for a variety of
goods.
With respect to applicant’s first point that its
MANTOVANI mark is well known, evidence of the “fame” of
applicant’s mark would certainly be a relevant factor in
establishing distinctiveness under Section 2(f) of the
Trademark Act. However, applicant has not claimed the
benefits of Section 2(f) and, without a formal claim of
distinctiveness under Section 2(f), evidence that
Ser No. 79006905
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applicant’s mark is well known cannot serve as the basis
for allowing registration of applicant’s mark.3
With respect to applicant’s second point, we are
certainly aware that it is a common practice for fashion
designers to market clothing and other goods under their
surnames. It is still the case, however, that a surname,
even of a designer, will be unregistrable if its primary
significance to purchasers is that of a surname, in the
absence of a showing of acquired distinctiveness.
Insofar as the applications and registrations
submitted by applicant are concerned, they do not persuade
us to reach a different result herein. The applications
are evidence only of the fact that such applications were
filed. Insofar as the three third-party registrations are
concerned, we note that the marks DOLCE & GABANNA in
Registration No. 2148585 and GORGIO ARMANI in Registration
No. 2890116 are not primarily merely surnames, and the
registration for VERSACE (Registration No. 2440541) issued
under the provisions of Section 2(f). In short, these
applications and registrations do not support applicant’s

3 We note that the examining attorney directed applicant’s
attention to possibly seeking registration under the provisions
of Section 2(f).
Ser No. 79006905
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position that it is entitled to registration in this case.
In any event, 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.”]
Decision: The refusal to register applicant’s mark
under Section 2(e)(4) is affirmed.