Tommy Bahama Group, Inc.

Trademark Trial and Appeal Board

Feb 1, 2007

No. 78482456 (T.T.A.B. Feb. 1, 2007)

Hearing: Mailed:
15 November 2006 1 February 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tommy Bahama Group, Inc.
________

Serial No. 78482456
_______

Edward M. Prince of Alston & Bird LLP for Tommy Bahama
Group, Inc.

Geoffrey Fosdick, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Hairston, Bucher, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 13, 2004, Tommy Bahama Group, Inc.
(applicant) applied to register the mark CAMPOLO, in
standard character form, on the Principal Register for
“men’s shirts” in Class 25. Serial No. 78482456. The
intent to use application was subsequently amended to
contain an allegation of dates of first use anywhere and in
commerce of January 2005.
THIS OPINION
IS NOT
A PRECEDENT OF
THE TTAB
Ser No. 78482456
2
The examining attorney refused to register applicant’s
mark on the ground that the mark is primarily merely a
surname under Section 2(e)(4) of the Trademark Act. 15
U.S.C. § 1052(e)(4). After the examining attorney made the
refusal final and denied applicant’s request for
reconsideration, this appeal was briefed and an oral
argument was held November 15, 2006.1
The only issue in this appeal is whether applicant’s
mark “is primarily merely a surname.” 15 U.S.C.
§ 1052(e)(4). When we are faced with this type of refusal,
consideration must be given to the impact a term has or
would have on the purchasing public because “it is that
impact or impression which should be evaluated in
determining whether or not the primary significance of a
word when applied to a product is a surname significance.
If it is, and it is only that, then it is primarily merely
a surname.” In re Harris-Intertype Corp., 518 F.2d 629,
186 USPQ 238, 239 (CCPA 1975), quoting, Ex parte Rivera
Watch Corp., 106 USPQ 145 (Comm’r 1955). In the Harris-
Intertype case, the term HARRIS was held to be primarily
merely a surname despite the evidence that HARRIS also had

1 Applicant also filed a paper entitled “Alternative Amendment to
Supplemental Register” that sought (page 1) registration on the
Supplemental Register if “applicant’s concurrently filed appeal
[is] unsuccessful.”
Ser No. 78482456
3
numerous secondary geographic meanings and that it was also
a common English given name. Id. at 239-240 (The CCPA
pointed out that these names were either obscure or related
to a named individual or the surname, HARRIS).
We normally look to four factors in our surname
analysis.
1. Whether the surname is rare;

2. Whether anyone connected with applicant has the
involved term as a surname;

3. Whether the term has any other recognized meaning;
and

4. Whether the term has the “look and feel”’ of a
surname?.

In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB
2000).2 See also In re Gregory, 70 USPQ2d 1792, 1794 (TTAB
2004).
The examining attorney must present evidence to show
that a mark is primarily merely a surname. In re Raivico,
9 USPQ2d 2006, 2007 (TTAB 1988) (“[T]here is no evidence
whatsoever showing that DE TAVERNAY or TAVERNAY are
actually being used as surnames. Indeed, given the fact
that there is not even one single listing for DE TAVERNAY

2 If applicant’s mark included a stylization feature, we would
also consider whether the stylization is “distinctive enough” to
cause the mark not to be perceived as primarily merely a surname.
See In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB
1995).
Ser No. 78482456
4
in the telephone directories of Manhattan, Los Angeles, New
Orleans, Baton Rouge, Denver and six other major cities, it
would appear that DE TAVERNAY is not being used as a
surname”). In this case, the examining attorney submitted
the following evidence to support the surname refusal.
1. A page from Microsoft Bookshelf Basics that did not
reveal any entries for the term “Campolo” in The American
Heritage Dictionary, The Original Roget’s Thesaurus, or The
Columbia Dictionary of Quotations.
2. A page from WhitePages.com showing that there were
99 entries for the name Campolo. The examining attorney
attached examples of these entries that revealed “Campolos”
in New Jersey, New York, Connecticut, Ohio, Illinois, and
Florida.
3. A page from the namestatistics.com database that
indicated that: “Around 1250 US last names are Campolo.”
4. A page from Ancestry.com that included a search for
Campolo that revealed more that 2000 entries.
5. An Internet search revealed the names of Carmen
Campolo, a Hollywood special effects technician, whose
screen credits include The Stepford Wives (2004),
Unfaithful (2002), Double Whammy (2001), One True Thing
(1998), and Great Expectations (1998).
Ser No. 78482456
5
6. Even more significantly, a Google Internet search
showed that there were 306,000 hits for “Tony Campolo” aka
Anthony Campolo. An attached website describes Tony
Campolo and his association (The Evangelical Association
for the Promotion of Education (EAPE))3 as follows:
For more that 30 Years we have been committed to what
God is doing through Christian people in inner-city
America and around the world. Join us, because as
Tony says… “It’s Friday But, Sunday’s Coming!”

Featured EAPE Ministry
Urban Promise
Urban Promise is headquartered in Camden, NJ, and
reaches hundreds of children and teenagers through a
variety of daily activities that include Bible Study,
evangelism, tutoring, sports, music and drama.

Other entries indicate that Tony Campolo is: an
“Eastern College Sociology professor. Tony Campolo,
President of EAPE, has authored 30 books,”
www.tonycampolo.com, and “a ferocious critic of Christians
left and right.” www.christianitytoday.com.
7. A Lexis/Nexis search revealed 536 stories for
various people name Campolo.
We look at this evidence to determine if the examining
attorney has established a prima facie case that the term
is primarily merely a surname. The first factor we

3 The website also contained the following information under
“News and Updates”: “03.02.06 – Tony Campolo’s appearance on
Comedy Central’s The Colbert Report.”
Ser No. 78482456
6
consider is whether the term is a rare surname. We note
that there are 99 entries for Campolo in the telephone
directory and more than one thousand entries in the
www.namestatistics.com and Ancestry.com databases. While
the evidence shows that “Campolo” is not a common surname,
it is not a very rare surname. More importantly, we must
consider evidence of how the name would be encountered as a
surname in the United States.
In the case at hand, the record reveals that the (now
former) Director of the United States Patent and
Trademark Office is James Rogan. Moreover, the record
reveals that Mr. Rogan was the majority leader of the
California State Assembly before being elected to
represent a U.S. House district in Southern
California; that he received press attention for his
role as an impeachment manager during the impeachment
trial of former President Clinton; and that he
subsequently received additional press attention for
his role as a candidate for re-election in what was
reported to be, at that time, the most expensive race
ever for a seat in the U.S. House of Representatives.
In addition, the record reveals that a Salt Lake City
councilman is named Tom Rogan. We think it is fair to
conclude that large numbers of individuals in the
Southern California and Salt Lake City areas would be
exposed to the names of these elected officials,
whether during an election campaign, in a polling
place, or in news reports on government activities.

Gregory, 70 USPQ2d at 1795. The “existence of these
individuals with the surname ROGAN leads us to conclude
that the name may be rare when viewed in terms of frequency
of use as a surname in the general population, but not at
all rare when viewed as a name repeated in the media and in
Ser No. 78482456
7
terms of public perception. Accordingly, we conclude that
ROGAN is not a rare surname.” Id.
Here, the evidence shows that Tony Campolo is a
theologian, a prolific author, and a minister with a
national organization. See, e.g., The Ledger (Lakeland,
FL), October 23, 2004 (“Notable evangelical writers Tony
Campolo and Philip Yancey”); Arkansas Democrat-Gazette,
July 5, 2003 (“Tony Campolo left no toe unstomped and threw
in a couple of verbal right hooks…”); and Atlanta
Constitution, September 2, 2003 (“The article was not
written by Episcopalians but by Tony and Peggy Campolo”).
The examining attorney’s evidence convinces us that the
term CAMPOLO would ultimately not be considered a rare
surname. We add that even if it is considered somewhat
rare, it would not mean that it was not primarily merely a
surname. In re Industrie Pirelli Societa per Azioni, 9
USPQ2d 1564, 1566 (TTAB 1988) (“Applicant’s evidence proves
that ‘Pirelli’ is a rare surname but fails to rebut the
Examining Attorney’s prima facie showing that ‘Pirelli’
would be viewed as a surname by the relevant public”). See
also In re Etablissements Darty et Fils, 759 F.2d 15, 225
USPQ 652, 653 (Fed. Cir. 1985); Gregory, 70 USPQ2d at 1795;
and In re E. Martinoni Co., 189 USPQ 589, 590 (TTAB 1975).
Ser No. 78482456
8
The second factor we consider is whether anyone
associated with applicant has the surname “Campolo.” The
examining attorney has presented no evidence on this factor
and applicant has indicated that “there is no person
associated with the applicant having Campolo as a surname.”
Easton declaration at 1.
Third, we look to see if there is any evidence to
indicate that the name has another recognized meaning. In
this case, the examining attorney has submitted evidence
that there is no recognized meaning for the name Campolo.
The last relevant factor we must consider is whether
the term has the “look and feel” of a surname. The
examining attorney’s evidence concerning the rareness of
the surname also supports the examining attorney’s argument
that Campolo has the “look and feel” of a surname. First,
there are numerous individuals with the surname “Campolo.”
Second, the author and minister, Tony Campolo, has received
significant exposure as a public figure. Third, the
examining attorney’s evidence indicates that there is no
other recognized meaning for the term.
At this point, we must conclude that the examining
attorney has made out a prima facie case that the term
CAMPOLO is primarily merely a surname. Once the examining
attorney has made out a prima facie case, we look to
Ser No. 78482456
9
applicant’s evidence to see if applicant has rebutted the
examining attorney’s prima facie case.
Applicant begins by arguing that the name CAMPOLO is a
very rare surname. Applicant points out that Campolo ranks
44,336 in surname frequency. However, the board has noted
that: “Given the large number of different surnames in the
United States, even the most common surnames would
represent but small fractions of such a database.”
Gregory, 70 USPQ2d at 1795. As previously discussed, the
sheer number of listings in a phone database is not
conclusive in determining whether a surname is rare.
Another issue to be considered, in assessing how
rarely is a name used, is the media attention or
publicity accorded public personalities with the name.
A surname rarely appearing in birth records may
nonetheless appear more routinely in news reports,
articles and the like, so as to be broadly exposed to
the general public.

Id.
Here, the evidence shows that the name Campolo is
commonly associated with Tony Campolo, the minister, and
this evidence reinforces the conclusion that the term
CAMPOLO is not a rare surname.
We have already acknowledged that there is no one
associated with applicant that has the surname CAMPOLO,
however, “that a proposed mark is not the applicant's
surname, or the surname of an officer or employee, does not
Ser No. 78482456
10
tend to establish one way or the other whether the proposed
mark would be perceived as a surname.” Id.
Applicant’s most significant argument concerns whether
applicant’s mark has any other meaning. Applicant argues
(Brief at 7) that its “shirt is a variation between a camp
shirt and a polo shirt. Thus, applicant has adopted the
suggestive mark CAMPOLO as a telescoped word derived from
‘camp’ and ‘polo.’” Applicant has included evidence that
that there is a type of shirt known as a camp shirt. See
Request for Reconsideration, Ex. A (“Camp Shirt Bonanza”
and “Cherokee Boy Olive Camp Shirt and Short Canvas Set”).
There are also shirts known as polo shirts. Request for
Reconsideration, Ex. B. Applicant’s goods are “styled
after the Tommy Bahama campshirt but in a knit for a more
relaxed feel.” Request for Reconsideration, Ex. C.
When we consider this evidence and argument, we are
not persuaded that the term CAMPOLO is not primarily merely
a surname. First, applicant’s identification of goods
reads simply “men’s shirts” so nothing would prevent
applicant from using its mark on T-Shirts, dress shirts,
flannel shirts, and other non-combination camp and polo
shirts. Clearly, even with applicant’s argument, there
would be no non-surname significance for the term CAMPOLO
on these types of shirts. Second, applicant’s mark is
Ser No. 78482456
11
CAMPOLO and not CAMP POLO or even CAMPPOLO. The board has
held that the mark PICKETT SUITE HOTEL was still a surname
despite that fact that it is phonetic equivalent of the
common term “Picket.”
To accept appellant's argument would automatically
excuse from the proscription of Section 2(e)(3) [now
2(e)(4)] all surnames that sound like words having
other ordinary meanings, a result which would
emasculate the purpose of the statute to preclude
registration of signs which are primarily merely
surnames, except where secondary meaning has been
established, in the interest of preserving as far as
is reasonable the personal rights in names which
identify particular individuals.

In re Pickett Hotel Company, 229 USPQ 760, 761 (TTAB 1986).4
See also In re Woolley's Petite Suites, 18 USPQ2d 1810,
1812 (TTAB 1991) (“Nor are WOOLLEY'S and “wooly”
interchangeable words”).
In this case, the terms CAMPOLO or even CAMPPOLO do
not exist as recognized terms to describe a type of shirt.
Even if the terms “Camp Polo” or “Camppolo” might refer to
a type of shirt, we could not conclude that these terms
would be interchangeable with the name CAMPOLO. Therefore,
it is even less likely that prospective purchasers would
conclude that applicant has invented a new word for its
shirts. Applicant’s own advertisement does not make the

4 We note that the “Tony Campolo/EAPE website has a link for:
“Store.”
Ser No. 78482456
12
connection between a camp shirt and a polo shirt. Request
for Reconsideration, Ex. C. Therefore, the term CAMPOLO
does not have any other recognized meaning that would
detract from the surname significance of the term.
Applicant also argues that the mark does not have the
“look and feel” of a trademark because the word “polo”
“creates a suggestive mark for a shirt.” Brief at 8. In
applicant’s mark, the term “polo” is buried in the term
CAMPOLO. However, it is not clear why potential purchasers
would dissect the mark and remove the “polo” part of the
mark and conclude that the term is not a surname. The mere
fact that a surname can include part of a common word that
may have some significance to the goods or services does
not mean that the term is not primarily merely a surname.
In re Petrin Corp., 231 USPQ 902, 904 (TTAB 1986) (“We have
carefully considered applicant's claim that PETRIN is
actually derived from and represents an abbreviated
contraction of ‘petroleum’ and ‘insulation.’ This is
legitimate evidence as to perceptions of nonsurname
significance but we are not persuaded that such perceptions
would actually result or would displace the primary surname
import of the mark”) (parenthetical omitted). However, if
the evidence of surname significance is weak and there is a
direct connection between a part of a surname and the goods
Ser No. 78482456
13
or services, our case law has recognized that this fact may
show that the term is not primarily merely a surname. In
re BDH Two Inc., 26 USPQ2d 1556, 1558 (TTAB 1993) (“The
telephone directory listings [21 entries] do show
individuals with ‘Grainger’ as a surname, but that surname
significance is apt to lose out to the suggestive
significance of GRAINGERS when that term is used in
connection with grain-based products”). Unlike the BDH
case, the evidence of surname significance is not weak and
the buried term “polo” is unlikely to distract from the
surname significance of the mark. See Gregory, 70 USPQ2d
at 1796 (“We conclude that ROGAN has the look and sound of
a surname. It would not be perceived as an initialism or
acronym, and 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. Rather, ROGAN appears to be a cohesive term with
no meaning other than as a surname”) (footnote omitted).
After considering all the record, we conclude that
applicant has not rebutted the examining attorney’s prima
facie case that the term CAMPOLO is primarily merely a
surname.
Decision: The refusal to register applicant’s mark
CAMPOLO on the ground that it is primarily merely a surname
Ser No. 78482456
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is affirmed. In view of applicant’s alternative amendment
to the Supplemental Register, the application will be
forwarded to the examining attorney for further processing
to accommodate applicant’s request.