Rahmani Group S.p.A.

Trademark Trial and Appeal Board

Mar 4, 2021

79250686 (T.T.A.B. Mar. 4, 2021)

Mailed: March 4, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Rahmani Group S.p.A.
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Serial No. 79250686
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Alexander Lazouski of Lazouski IP LLC
for Rahmani Group S.p.A.

Brittany Colton, Trademark Examining Attorney, Law Office 127,
Mark Pilaro, Managing Attorney.
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Before Adlin, Goodman and Pologeorgis, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Rahmani Group S.p.A. requests an extension of protection of
International Registration No. 1446850 for the proposed mark RAHMANI, in
standard characters, for an exceedingly wide variety of food and beverage products
in International Classes 29 and 30.1 The Examining Attorney refused registration
under Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4), on the ground that
Applicant’s proposed mark is primarily merely a surname. After the refusal became
final, Applicant appealed and Applicant and the Examining Attorney filed briefs.

1 Application Serial No. 79250686, filed September 25, 2018, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a).
This Opinion is Not a
Precedent of the TTAB
Serial No. 79250686
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I. The Record
The Examining Attorney relies on Applicant’s website, which indicates that
Applicant is a multi-generational family business which operates under the family’s
surname RAHMANI, with Rahmani Group Food Unit being an apparent subsidiary
or affiliate of Applicant Rahmani Group:

February 12, 2019 Office Action TSDR 64. She also relies on “negative” gazetteer and
dictionary evidence showing that “rahmani” has no English language meaning or
geographic significance. Id. at 36, 37. Google search results and a New York Times
article reveal that Roya Rahmani is Afghanistan’s Ambassador to the United States.
August 20, 2019 Office Action TSDR 64-65, 67-69.
Finally, the Examining Attorney relies on a LexisNexis public records search
apparently covering just the United States which lists 1,408 people with the surname
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Rahmani. February 12, 2019 Office Action TSDR 12-34. Another LexisNexis public
records search apparently covering just the United States lists 26,398 people with the
surname “Rahman,” and a Wikipedia entry for “Rahman” indicates that it is an
“Arabic male name,” and “[w]ith nisba (Arabic onomastic), the name becomes
Rahmani, means ‘descendant of the gracious one’ and is used as a surname.” Id. at
38-61. A third LexisNexis public records search apparently covering just the United
States lists 8,095 people with the last name “Rehman.” August 20, 2019 Office Action
TSDR 12-35.2
For its part, Applicant relies on evidence that “rahmani” means “Godlike” or
“Godlikenesses” in Urdu. July 29, 2019 Office Action response TSDR 25, 29. Applicant
also relies on an article which indicates that from 2010-2014 the number of Urdu
speakers in the United States increased 23 percent, but the article does not indicate
how many Americans speak Urdu. Id. at 19.
II. Analysis
Marks which are “primarily merely a surname” may not be registered on the
Principal Register unless they have acquired distinctiveness. 15 U.S.C. §§ 1052(e)
and (f); In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir.
1985). “A term is primarily merely a surname if, when viewed in relation to the goods
or services for which registration is sought, its primary significance to the purchasing

2 Evidence from the site “forebears.io” reveals a number of additional surnames which look
and sound similar to “Rahmani,” but for the most part this evidence does not relate to the
United States. August 20, 2019 Office Action TSDR 36-63. Similarly, we have not relied on
search results or articles which do not clearly reveal public perception of “rahmani” in the
United States.
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public is that of a surname.” Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1480
(TTAB 2017). This is a question of fact, on which the Office bears the burden of proof.
It can be resolved only on a case-by-case basis. Darty, 225 USPQ at 653; In re Eximus
Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016). Here, the record includes
evidence typical of many surname cases: whether anyone affiliated with Applicant is
named RAHMANI; whether the term has any non-surname meaning; whether the
term is rarely used and encountered as a surname; and whether RAHMANI has the
structure and pronunciation of a surname. See, e.g., Azeka Bldg., 122 USPQ2d at
1480-81; In re Eximus Coffee, 120 USPQ2d at 1278. Based on this evidence, we find
that the Examining Attorney has made a prima facie showing that the proposed mark
is primarily merely a surname, which Applicant has not rebutted.
A. Applicant Was Founded By and Remains Connected to a Rahmani
There is no dispute that Applicant was founded and is currently operated by
members of the RAHMANI family. In fact, Applicant’s website proudly details its
history, and touts its connections to the RAHMANI family. February 12, 2019 Office
Action TSDR 64. This evidence supports a finding that RAHMANI will be perceived
as a surname. See Darty, 225 USPQ at 653 (finding that DARTY is primarily merely
a surname in part because it “is not only the surname of the principal of the business,
but also is used in the company name in a manner which reveals its surname
significance …”); In re Integrated Embedded, 120 USPQ2d 1504, 1506 (TTAB 2016)
(affirming surname refusal based on analogous evidence); In re Weiss Watch Co., Inc.,
123 USPQ2d 1200, 1203 (TTAB 2017) (“Applicant’s promotion of its founder’s
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connection to the company and its goods is persuasive of consumer perception of
WEISS as a surname.”).
B. Rahmani Has No English Meaning Other Than As a Surname
Consumers are also likely to believe that RAHMANI is a surname because the
“negative” dictionary and gazetteer evidence of record reveals that the term has no
English non-surname meaning. On the other hand, the Wikipedia entry reveals that
RAHMANI is a surname and the record reveals that a number of people in the United
States have that surname. In re Eximus Coffee, 120 USPQ2d at 1280 (“The evidence
that ALDECOA has no other recognized meaning further supports the Examining
Attorney’s case that its primary significance is as a surname.”); In re Binion, 93
USPQ2d 1531, 1537 (TTAB 2009) (finding that BINION is primarily merely a
surname in part based on dictionary evidence “showing the absence of an entry for
‘Binion’”).3

3 We are not persuaded by the evidence that Rahmani means “Godlike” or “Godlikenesses” in
Urdu, because there is no evidence regarding how many Urdu speakers live in the United
States. Furthermore, there is no evidence or reason to believe that Urdu speakers would
associate a term meaning “Godlike” with Applicant’s identified food and beverage products.
Darty, 225 USPQ at 653 (“Here there is no relationship between the word ‘dart’ and repair,
maintenance, and distributorship services, which would lead one to think of that word from
the use of DARTY as the mark for such services.”); Mitchell Miller, PC v. Miller, 105 USPQ2d
1615, 1621 (2013) (‘The mere existence of other non-surname meanings of the mark does not
preclude a finding that the mark is primarily merely a surname. Rather, we consider both
whether, and if so, the degree to which, the public would associate any established meaning
with the goods or services in the application.”).
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C. Rahmani is a Rare Surname
Applicant strenuously argues and the evidence makes clear that RAHMANI is
rarely used as a surname in the United States.4 That does not mean it is not primarily
merely a surname, however. In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB
2017) (“Even a rare surname may be held primarily merely a surname if its primary
significance to purchasers is that of a surname.”); In re Eximus Coffee, 120 USPQ2d
at 1281 (“Section 2(e)(4) makes no distinction between rare and commonplace
surnames … and even a rare surname is unregistrable if its primary significance to
purchasers is a surname.”) (numerous citations omitted). In fact, where, as here, a
surname is rarely used but has no other meaning, and is the name of someone
affiliated with an applicant, it is often found to be primarily merely a surname. Thus,
this evidence, standing alone (as it does), is insufficient to defeat the Examining
Attorney’s prima facie case.
Furthermore, the record establishes that Roya Rahmani is somewhat prominent
as Afghanistan’s Ambassador to the United States, to the point that the New York
Times published a fairly extensive article focusing on her personally and her
involvement in peace talks with the Taliban.5 Thus, while RAHMANI is a rare

4 Applicant claims to have “briefly reviewed the first 400 records” in the LexisNexis public
records search results, and claims that 6.25% are duplicates. It speculates that there are in
fact “approximately 1300 separate listings in the entire United States,” rather than the 1,408
listed in the search results. 4 TTABVUE 6. While we disagree with Applicant’s counting
method (if we understand it correctly), we assume that there are duplicates and, for purposes
of this decision only, accept Applicant’s speculation that there are approximately 1,300
separate listings in the United States.
5 Applicant speculates, without supporting evidence, that “most articles are not normally
read when they appear in a paper or other publications,” and argues that “there can be no
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surname in the United States, we can safely assume that in addition to those who
have encountered one of the American Rahmanis, many have also been exposed to
Ambassador Rahmani’s surname.
D. Rahmani’s Structure and Pronunciation is Somewhat Similar to
Other Surnames’ Structure and Pronunciation
This is a “highly subjective” inquiry and rarely if ever carries the day in surname
cases. Nonetheless, the Examining Attorney has established that “Rahman,” which
differs from Applicant’s name only by deleting the letter “i” at the end of RAHMANI,
is not an uncommon surname in the United States. Moreover, the Wikipedia entry
indicates that “Rahman” has a linguistic connection to “Rahmani.” February 12, 2019
Office Action TSDR 38-61. There are also a number of Americans named “Rehman,”
another surname which is also fairly similar to RAHMANI. August 20, 2019 Office
Action TSDR 12-35. While this evidence is far from overwhelming, it weighs slightly
in favor of finding that RAHMANI is primarily merely a surname. Indeed, there is no
evidence or basis upon which to believe that RAHMANI would be perceived as “an
initialism or acronym … and [it] does not have the appearance of having been coined
by combining a root element that has a readily understood meaning in its own right
with either a prefix or a suffix.” In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004).

presumption that any of the cited articles were read by a statistically significant number of
persons in US.” 4 TTABVUE 8. We disagree. There would be no reason for a publication,
whether for profit or nonprofit, to report, write and distribute articles that are not read, and
if a New York Times article about someone in the United States having the surname in
question is not probative evidence of public perception, it is hard to imagine what types of
evidence would be probative.
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III. Conclusion
The record leaves no doubt that RAHMANI is primarily merely a surname.
Indeed, RAHMANI is Applicant’s name, the name of its founder, and the name of
others affiliated with the company; and RAHMANI has no non-surname English
language meaning, nor any non-surname meaning in another language which United
States consumers have been shown to recognize. While the name is certainly rare, we
have affirmed refusals of surnames which are much rarer than RAHMANI. See e.g.
In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1720-21 (TTAB 2016) (finding
ADLON primarily merely a surname despite evidence that only 75 United States
individuals have that name, pointing out that the “strictly numerical approach to a
surname analysis has been squarely rejected”); see also In re Eximus Coffee, 120
USPQ2d at 1282 (“The statute does not exempt wholesale from this prohibition those
surnames shared only by a few, or provide that the purpose of the prohibition is to
protect others’ rights to use their surnames except for those with uncommon
surnames.”); In re Beds & Bars., 122 USPQ2d at 1551 (refusing registration even
though “according to the Lexis/Nexis evidence supplied by the Examining Attorney,
only five people in the U.S. are named BELUSHI, establishing that it is an
exceedingly rare surname”).6

6 Applicant’s heavy reliance on the majority and concurring opinions in In re Joint-Stock Co.
“Baik”, 84 USPQ2d 1921 (TTAB 2007) is misplaced, for many of the reasons explained in In
re tapio GmbH, 2020 USPQ2d 11387 *10-11 (TTAB 2020).
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Decision: The refusal to register Applicant’s mark under Section 2(e)(4) of the Act is
affirmed.