Mssrs. Picchiotti S.r.l.

Trademark Trial and Appeal Board

Jun 24, 2005

No. 76476489 (T.T.A.B. Jun. 24, 2005)

Mailed: June 24, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Messrs. Picchiotti S.r.l.
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Serial No. 76476489
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John F. Volpe of Hedman & Costigan, P.C. for Messrs.
Picchiotti S.r.l.

Hannah Fisher, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Hairston, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Messrs. Picchiotti
S.r.l. (an Italian corporation) to register the mark
PICCHIOTTI for jewelry; precious metals; precious stones,
cuff links, tie pins, timepieces and jewelry cases.1
The trademark examining attorney has refused
registration under Section 2(e)(4) of the Trademark Act on

1 Application Serial No. 76476489, filed December 18, 2002. The
application was filed pursuant to Section 44(d); applicant later
submitted a certified copy of its Italian Registration No.
880375.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76476489
2
the ground that the mark sought to be registered is
primarily merely a surname.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
In support of her surname refusal, the examining
attorney has made of record the results of searches of the
PowerFinder and Metacrawler electronic databases, which
reveal that there are 36 residential telephone listings in
the United States for the surname Picchiotti. The
examining attorney has also submitted four excerpts from
the NEXIS database which list three people with the surname
Picchiotti. These excerpts include an article in the
Chicago Daily Herald which mentions an Angie Picchiotti; an
article in Florida Today which mentions a Rena Lynn
Picchiotti; and articles in two different newspapers,
namely, the Chicago Sun-Times and Tri-State Defender, which
mention a musician named Mark Picchiotti. An additional
excerpt from the NEXIS database which is from “Global News
Wire” mentions that applicant is owned by Giuseppe
Picchiotti. The examining attorney has also submitted
pages from the Merriam-Webster’s Geographical Dictionary
and Harper Collins Italian Dictionary, neither of which
shows a listing for Picchiotti. The examining attorney
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maintains that the above evidence establishes a prima facie
case that applicant’s mark is primarily a surname
In urging reversal of the refusal to register,
applicant argues that as evidenced by the examining
attorney’s limited evidence, Picchiotti is a rare surname
in the United States, and thus would not be perceived by
the public as a surname. Further, applicant contends that
as a result of its extensive use of PICCHIOTTI and the fact
that it has registered PICCHIOTTI as a trademark in many
other countries, PICCHIOTTI has meaning other than as a
surname. Finally, applicant requests that we resolve any
doubt as to whether PICHIOTTI is primarily merely a surname
in applicant’s favor.
The burden is on the trademark examining attorney to
establish a prima facie case that applicant’s mark is
primarily a surname. If a prima facie case is established,
the burden then shifts to the applicant to rebut it with
evidence sufficient to establish that the primary
significance of the mark is other than that of a surname.
See In re Etablissements Darty et Fils, 759 F.2d 15, 225
USPQ 652 (Fed. Cir. 1985); In re Petrin Corp., 231 USPQ 902
(TTAB 1986). Whether a term sought to be registered is
primarily merely a surname within the meaning of Section
2(e)(4) of the Trademark Act must necessarily be resolved
Ser No. 76476489
4
on a case by case basis, taking into account a number of
factual considerations. In re Etablissements Darty et
Fils, supra, 225 USPQ at 653. These considerations
include:
(1) The degree of a surname’s rareness;
(2) Whether anyone connected with applicant has that
surname;

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

(4) The structure and pronunciation or “look and
sound” of the surname.

In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995).
As to the first factor, namely, the degree of the
surname’s rareness, the evidence submitted by the examining
attorney shows that Picchiotti is a rare surname in the
United States. Thus, this factor weighs in favor of a
finding that PICCHIOTTI would not be perceived as primarily
a surname.
As to the second factor, the NEXIS excerpt made of
record by the examining attorney mentions that applicant is
owned by Giuseppe Picchiotti. In this regard, we note
applicant’s statement that “applicant cannot dispute that
someone connected with applicant has the subject term as a
surname.” (Brief, p. 3, fn. 1). Moreover, Picchiotti is
used in applicant’s company name in a manner which makes
Ser No. 76476489
5
apparent its surname significance, i.e., “Messrs.
Picchiotti.” Thus, this second factor weighs in favor of a
finding that the mark PICCHIOTTI would be perceived as
primarily merely a surname. See Darty, at 653 (The mark
sought to be registered, DARTY, was not only the surname of
a principal of applicant’s business, but also was used in
the company name in a manner which revealed its surname
significance).
As to the third evidentiary factor, namely, whether
PICCHIOTTI has any recognized meaning other than that of a
surname, applicant contends that PICCHIOTTI has another
meaning because it has extensively used PICCHIOTTI and the
term is registered as a trademark in many other countries.
We are not persuaded by applicant’s arguments. Applicant
does not seek to register its mark under the provisions of
Section 2(f) of the Trademark Act, and in the absence of a
Section 2(f) claim, evidence of extensive use of the
PICCHIOTTI mark cannot serve as the basis for allowing
registration of applicant’s mark. See In re Industrie
Pirelli, 9 USPQ2d 1564, 1565 (TTAB 1988)[Without a formal
claim of distinctiveness under Section 2(f), evidence of
fame as a result of use of PICCHIOTTI cannot serve as the
basis for allowing registration of applicant’s mark].
Also, applicant’s ownership of foreign registrations for
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the mark PICCHIOTTI is not relevant to a determination of
whether applicant is entitled to registration of PICCHIOTTI
in the United States. In this case, the record is devoid
of any evidence that Picchiotti has any meaning other than
that of a surname. Indeed, the evidence submitted by the
examining attorney shows that Picchiotti does not appear in
dictionaries as an Italian or English word. Thus, the
third factor also weighs in favor of a finding that
PICCHIOTTI would be perceived as primarily merely a
surname.
This brings us to the fourth factor to be considered
in this case, namely whether Picchiotti has the structure
and pronunciation of a surname, or the “look and sound” of
a surname. As stated in Pirelli, at 1566, “certain rare
surnames look like surnames, and certain rare surnames do
not and that ‘Pirelli’ falls into the former category,
while ‘Kodak’ falls into the latter.” We recognize that
this factor is subjective in nature. In this case, we find
that PICCHIOTTI indeed has the “look and sound” of a
surname.
In view of the foregoing, we find that the examining
attorney has made out a prima facie case that PICCHIOTTI is
primarily merely a surname. We also find that applicant
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has failed to present evidence sufficient to rebut that
prima facie case.
Decision: The refusal to register under Section
2(e)(4) is affirmed.