Mastran-tonio Holdings (Proprietary) Ltd.

Trademark Trial and Appeal Board

Mar 9, 2001

No. 75530347 (T.T.A.B. Mar. 9, 2001)

03/09/01 Paper No. 9
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mastrantonio Holdings (Proprietary) Limited
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Serial No. 75/530,347
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Jess M. Collen of Collen Law Associates, PC for
Mastrantonio Holdings (Proprietary) Limited.
Dionne T. Cuevas-Abreau, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
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Before Cissel, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On August 4, 1998 Mastrantonio Holdings (Proprietary)
Limited (a corporation of South Africa) filed an
application to register the mark MASTRANTONIO on the
Principal Register for “meat, fish, poultry and game;
preserved, dried and cooked fruits and vegetables; jellies,
jams, fruit sauces, eggs, milk, cream, edible oils and
fats” in International Class 29; “coffee, tea, cocoa,
sugar, rice, tapioca, sago, artificial coffee, flour,
cereal-based snack food, bread, pastry, candy, cakes,
flavored ice, honey, treacle, yeast, baking powder, salt,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/530347
2
mustard, vinegar, sauces, pepper, spices and ice” in
International Class 30; “wholesale and retail stores in the
field of catering and food production services, product
merchandising services, import agencies” in International
Class 35; and “delicatessens, cafes, cafeterias,
restaurants, snack bars, coffee shops, catering, bar
services, take-out restaurant services” in International
Class 42.” The application is based on applicant’s
assertion of a bona fide intention to use the mark “in
commerce in or with the United States.”
Registration has been finally refused under Section
2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4), on the
basis that the term MASTRANTONIO is primarily merely a
surname.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. No oral hearing was
requested by applicant.
Applicant contends that MASTRANTONIO is a rare
surname, and such term has meanings other than as a surname
because the purchasing public would be aware that “the term
can actually be broken into two parts, namely, the prefix
‘MASTR’ and the first name ‘ANTONIO’. The term ‘MASTR’ is
used in the Italian language as a sign of respect, and the
name ‘ANTONIO’ is a recognized first name in Italian.”
Ser. No. 75/530347
3
(Applicant’s response to first Office action, unnumbered p.
4.)1
The Examining Attorney contends that the primary
significance of the term MASTRANTONIO to the purchasing
public is that of a surname as evidenced by the 77
references found in Phonedisc, as well as by several
excerpted stories from the Nexis database (7 out of 2514
stories), all indicating uses of a first name with the
surname MASTRANTONIO; that MASTRANTONIO has no other
meaning as evidenced by the lack of any entry of
MASTRANTONIO in either the American Heritage Dictionary or
Webster’s New World Geographical Dictionary; that
applicant’s mark is not a rare surname, but even if it
were, rare surnames may be unregistrable under the
Trademark Act if, as here, the primary significance to
purchasers remains that of a surname; and that the invovled
mark has the “look, sound and structure of a surname”
(brief, p. 5). The Examining Attorney refutes applicant’s
argument about purchasers perceiving the mark in two
separate parts, “MASTR” and “ANTONIO,” as (i) unsupported
by any evidence; and (ii) an improper dissecting of the
1 Applicant specifically argues in its brief (unnumbered p. 3)
that its mark may have equal significance as “MASTR ANTONIO (such
as ‘Mister’ or ‘Master’ Antonio).”
Ser. No. 75/530347
4
mark in order “to arrive at a highly obscure non-surname
meaning.” (brief, p. 7.)
It is well established that the USPTO has the burden
of establishing a prima facie case that a mark is primarily
merely a surname, and that the test for determining whether
a mark is primarily merely a surname is the primary
significance of the mark as a whole to the purchasing
public. See In re BDH Two Inc., 26 USPQ2d 1556 (TTAB
1993), and cases cited therein. We are of the opinion that
the Examining Attorney has met that burden here, and that
applicant’s arguments have failed to rebut the Office’s
prima facie case.
Although the Phonedisc listings of MASTRANTONIO are,
as argued by applicant, a small fractional percentage of
the entire Phonedisc database (115 million names,
addresses, and phone numbers), even the surname SMITH would
presumably also constitute only a small fractional
percentage of the database. We note that one of the
stories in the Nexis evidence submitted by the Examining
Attorney includes a listing which refers to a movie star,
Mary Elizabeth Mastrantonio starring in Brian DePalma’s
movie “Scarface.” Also, the Nexis evidence includes
references to individuals named MASTRANTONIO from various
geographic areas, such as New York, Pittsburgh, Florida and
Ser. No. 75/530347
5
Tennessee. Based on the evidence, we find that the primary
significance of this term to the purchasing public is that
of a surname. Moreover, even if MASTRANTONIO is a rare
surname, this does not mean that its surname significance
would not be recognized by a substantial number of members
of the general public.
Applicant argued but submitted no evidence (e.g., a
page from an Italian-English English-Italian dictionary)
that “MASTR” has a meaning in Italian.2 Further, even if we
accept applicant’s statement (without proof) regarding the
letters “MASTR,” there is no evidence that Americans of
Italian descent, for example, would run the terms ‘MASTR’
and ‘ANTONIO’ together, as applicant has done in its mark
MASTRANTONIO.
The Examining Attorney did not inquire and applicant
offers no information as to whether MASTRANTONIO is the
surname of anyone connected with applicant. The signature
of the individual who executed the application is not
clearly legible. Therefore, there is no information of
record on this point.
2 Recognizing that the Board may take judicial notice of
dictionary definitions (see TBMP §712.01 and cases cited
therein), we note that Cassell’s Italian-English English-Italian
Dictionary (1967) reveals that there is no listing for “mastr”
but that “mastro” is defined as “Master” or “ledger”; that the
Italian word for “mister” is “Signore” or “Signor”; and the
Italian word for “master” is “Maestro.”
Ser. No. 75/530347
6
Finally, we consider the decidedly subjective factor
of whether MASTRANTONIO has the “look and feel” of a
surname. We conclude that it does. See In re Industrie
Pirelli, 9 USPQ2d 1564 (TTAB 1988).
Decision: The refusal to register under Section
2(e)(4) is affirmed.