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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1089575 Filing date: 10/19/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 79250686 Applicant RAHMANI GROUP S.p.A. Applied for Mark RAHMANI Correspondence Address ALEXANDER LAZOUSKI LAZOUSKI IP LLC SUITE 1, 14726 BOWFIN TER. LAKEWOOD RANCH, FL 34202 UNITED STATES Primary Email: [email protected] 2016455616 Submission Appeal Brief Attachments Applicant APPEAL RAHMANI.pdf(339770 bytes ) 1.pdf(2201667 bytes ) 2.pdf(538182 bytes ) 3.pdf(1924311 bytes ) Filer's Name Alexander Lazouski Filer's email [email protected] Signature /asl/ Date 10/19/2020

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Page 1: ESTTA Tracking number: ESTTA1089575 10/19/2020

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1089575

Filing date: 10/19/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 79250686

Applicant RAHMANI GROUP S.p.A.

Applied for Mark RAHMANI

CorrespondenceAddress

ALEXANDER LAZOUSKILAZOUSKI IP LLCSUITE 1, 14726 BOWFIN TER.LAKEWOOD RANCH, FL 34202UNITED STATESPrimary Email: [email protected]

Submission Appeal Brief

Attachments Applicant APPEAL RAHMANI.pdf(339770 bytes )1.pdf(2201667 bytes )2.pdf(538182 bytes )3.pdf(1924311 bytes )

Filer's Name Alexander Lazouski

Filer's email [email protected]

Signature /asl/

Date 10/19/2020

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Applicant:

RAHMANI GROUP S.p.A.

Trademark:

RAHMANI

Serial No.

79250686

APPLICANT’S BRIEF ON APPEAL

This is an appeal from a FINAL refusal dated April 28, 2020 to register the mark

RAHMANI. The question presented in this appeal is whether the RAHMANI mark, as used in the

connection with the above goods, is primarily merely a surname. Here, the record demonstrates

that RAHMANI is not primarily merely a surname.

DESCRIPTION OF RECORD

1. On January 31, 2019, Applicant filed an application for the RAHMANI trademark.

2. On February 12, 2019, an Official Action issued wherein the Examining Attorney

refused registration of Applicant’s mark because the mark was allegedly primarily merely a surname.

3. Applicant filed a timely response on July 29, 2019 presenting arguments against the

surname refusal.

4. On August 20, 2019, non-final Official Action issued wherein the Examining Attorney,

among other issues, once again refused registration of Applicant’s mark because the mark was allegedly primarily merely a surname.

5. Applicant filed a timely response on December 16, 2109 presenting arguments against

the surname refusal.

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6. On January 21, 2020 another non-final Official Action issued wherein the Examining

Attorney, among other issues, once again refused registration of Applicant’s mark because the mark was allegedly primarily merely a surname.

7. Applicant filed a timely response on February 4, 2020 presenting arguments against the

surname refusal.

8. A final Official Action issued on April 28, 2020 wherein the trademark examining

attorney maintained and made FINAL the refusal to register based on Trademark Act

Section 2(e)(4) because the applied-for mark is allegedly primarily merely a surname.

RECITATION OF FACTS

As noted above, the Examining Attorney ultimately refused registration of Applicant's

mark because the mark was allegedly primarily merely a surname. Three bases were identified

in the Action to support this refusal.

First, the Action asserted that, because the word "RAHMANI" is not listed in a

dictionary, it must be a surname. Second, the Examining Attorney claiming that RAHMANI

appearing 1408 times as a surname in a nationwide telephone directory of names. No records of

the individuals with such surname were submitted. Finally, applicant’s website shows that

“RAHMANI” is the surname of the founder and namesake of applicant’s business.

On July 28, 2019, Applicant filed a response to this Official Action with the following

rebuttal arguments:

1. Based on the provided evidence, RAHMANI, at most, is an extremely rare surname

which means the majority of consumers will never encounter a person bearing that

surname and therefore never perceive the mark as such.

2. According to the current practice, lack of other meanings of the name in the English

language will not support refusal of registration of the surname under the ‘primarily merely a surname’ statutory language unless the average member of the purchasing public would, upon seeing it used as a trademark, recognize it as a surname.

3. Lack of references to any particular individuals aside from a phone directory does not

show that RAHMANI is primarily merely surname. The Examining attorney failed to

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demonstrate that any of such individuals with surname RAHMANI are notable to

consumers in the United States.

4. RAHMANI has non-surname significance. Specifically, “RAHMANI” means

“godlike” in Urdu language, which is used by approximately 67 million people. Based

on this Applicant submits the primary significance cannot be that of a surname, and

this statement is corroborated by the evidence attached to the instant response.

5. Applicant’s mark does not look or feel like a surname.

On August 20, 2019 the Examining Attorney issued a another refusal wherein he:

(1) attached several articles briefly mentioning individuals with last name RAHMANI

(2) stated that despite the fact that “RAHMANI” means “godlike” it ”does not diminish

its surname significance”.

(3) attached additional evidence from LEXISNEXIS shows that a significant number of

individuals possess the similar sounding surname “RAHMAN” and “REHMAN”,

which allegedly demonstrates that “RAHMANI” has the structure and pronunciation

of a surname. See previous attachment from LEXISNEXIS.

6. In January 21, 2020 and April 28, 2020 the Examining Attorney basically

reestablished his position without providing any additional evidence except for:

1. an extract from lastnames.myheritage.com website with a short description of

records distribution for “Rahmani Family”; and

2. an extract from Wikipedia ® showing 8 individuals with surname RAHMANI

None of these records adds any weight to the Examining Attorney’s position, as they

do not indicate if any of such individuals are located in US or known to US customers.

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ARGUMENTS

A. Burden of Proof

As indicated above, Applicant's RAHMANI mark was refused registration solely on the

ground that it is primarily merely a surname. As an initial matter, the Office has the burden of

establishing a prima facie case that the mark in question is primarily merely a surname. TMEP §

1211.02(a); In re Etablissements Darty et Fils, 225 U.S.P.Q. 652 (Fed. Cir. 1985); In re Kahan &

Weisz Jewelry Mfg. Corp., 184 U.S.P.Q. 421, 422 (CCPA 1975); In re Harris-Intertype Corp., 186

U.S.P.Q. 238, 239 (CCPA 1975). Section 2(e)(4) of the Trademark Act of 1946 provides that

registration should be refused if the proposed mark is “primarily merely a surname.” “Merely” is

synonymous with “only,” and “primarily” refers to “first in order” or “fundamentally.” Thus, the

Examining Attorney must prove that RAHMANI is fundamentally only a surname. In re I. Lewis

Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265, 267 (CCPA 1953). Typically, this burden is carried

by showing an unusually large number of telephone directory listings.

The Board in In re Benthin Mgmt. GmbH, 37 U.S.P.Q.2d 1332 (TTAB 1995) discussed

several factors to be considered in evaluating whether a mark would be perceived as primarily

merely a surname, including: (1) the degree of a surname’s rareness, (2) whether anyone

connected with the applicant has the involved term as a surname, (3) whether the mark has any

recognized meaning other than that of a surname, and (4) whether the mark has the “look and

sound” of a surname. Id. at 1333; TMEP § 1211.01. These factors are discussed in turn below.

B. RAHMANI is an extremely rare surname

In the original office action the Examining Attorney provided the results of a nationwide

LEXIS NEXIS search for individuals with the surname “RAHMANI” and presumably located

only 1408 listings. Applicant asserts that based on the provided evidence RAHMANI, at most, is

an extremely rare surname. First of all, there is no threshold number of surname listings upon

which the Board bases its decisions regarding “rareness” of surnames. In fact in In re United

Distillers plc, 56 USPQ2d 1220 (TTAB 2000) even with nearly 1300 references of surname

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HACKLER in Phonedisc database, the Board stated that “based on this record, we find that the

term HACKLER is a rare surname…” (bold font added); also see United Distillers at 1222.

Moreover, the Board highlighted that “…[a]s we have noted before, when considering Phonedisc

evidence, we recognize the massive scope of that database. (According to the Phonedisc prefatory

comment appearing in the submission from the Examining Attorney, there are approximately 80

million entries in the database.)” See In re Benthin Management GmbH, supra, at 1333.

In the present case the examining attorney stated that slightly over 1400 individuals with

RAHMANI surname listed in Nexis Public record database. Nexis Public record database contains

283 million individuals and US population is currently over 328 million individuals. Therefore,

eliminating the unavoidable multiple duplication in the database extract provided by the

Examining Attorney (for example, Applicant briefly reviewed the first 400 records and located

duplicate references 37 and 38; 69 and 74; 85 and 86; 100-103; 115 and 121; 130 and 131; 177

and 178; 179 and 180; 186 and 187; 244 and 245; 247 and 250; 261 and 262; 268 and 269; 273

and 274; 289 and 290; 331 and 332 ; 344 and 347; 351 and 352; 343 and 361, 341 and 360, 368

and 369; 373 and 374; 376 and 377; 399 and 400 which amounts to 6.25% of duplicates) and

choosing a midrange of approximately 1300 separate listings in the entire United States, we are

looking at a surname for only one in every 252,000 individuals in the U.S. population. It surely

means the majority of consumers in the United States will ever know or ever have heard of anyone

with such a rare name and therefore never perceive the mark as such. Hence, it is logical to assume

that RAHMANI is such an extremely rare surname that few prospective consumers are likely to

perceive it as a surname, and substantially no one will be adversely affected by the registration of

this term for the recited goods. As such, Applicant’s RAHMANI mark cannot reasonably be

construed to be primarily merely a surname.

As explained by Judge Seeherman in her concurrence in In re Joint-Stock Company “Baik”

In re Joint-Stock Co. Baik, 84 USPQ2d, 1924, 1925 (TTAB 2007), the “purpose behind prohibiting

the registration of marks that are primarily merely surnames is not to protect the public from

exposure to surnames,… Rather, the purpose behind Section 2(e)(4) is to keep surnames available

for people who wish to use their own surnames in their businesses...” (citation omitted). If a

surname is extremely rare, like RAHMANI, the likelihood that another party will want to use the

name for the same or related goods is extremely low. Interpreting this factor to refuse registration

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of a mark simply because it is similar to recognized surnames do not serve the intent of the statute,

which is to keep surnames available for use by those with that surname (of which the Examining

Attorney proved to be under 100).

As such, in the instant case, the Examining Attorney’s evidence shows, at most, that

RAHMANI is an extremely rare surname.

Second, the Examining Attorney’s reliance on negative dictionary evidence is misplaced

because it overlooks the fact that consumers are likely to view RAHMANI as a fanciful trademark:

[C]ertain surnames are so rare that they do not even have the

appearance of surnames. In such cases, even in the absence of non-

surname significance, a reasonable application of the “primary significance to the purchasing public” test could result in a finding that the surname, when used as a mark, would be perceived as

arbitrary or fanciful.

TMEP § 1211.01(a)(vi).

The absence of a dictionary definition for RAHMANI does not provide any real support

for the refusal because, as the Board has held:

While a significant non-surname meaning usually helps the position

of an applicant, we find that the converse (i.e., a determination that

the involved term does not have any non-surname meaning) does

not help significantly the position of the Trademark Examining

Attorney.

Amlin, supra. See also In re Garan Inc., 3 U.S.P.Q.2d 1537, 1539 (T.T.A.B. 1987) (“That there

are no other meanings of the name in the English language will not support refusal of registration

of the surname under the ‘primarily merely a surname’ statutory language unless the average

member of the purchasing public would, upon seeing it used as a trademark, recognize it as a

surname.”). Indeed, “the Patent Office has the burden to show that [a term] is primarily merely a

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surname and unless it meets its burden, appellant need not demonstrate non-surname significance

of its mark.” In re Kahan at 421, 422 (C.C.P.A. 1975).

Further, the Examining Attorney submitted extracts from several news articles referring to

individuals with the surname RAHMANI. However, most articles are not normally read when

they appear in a paper or other publications. Moreover, some of such articles are not even published

in US publications (see The Africa Report Article, p. 71 in the August 210, 2019 office action).

Thus, there can be no presumption that any of the cited articles were read by a statistically

significant number of persons in US. Therefore, reliance on fairly low number of local news

articles and online publications do not show that RAHMANI is primarily merely surname. In

addition, the name RAHMANI is typically buried in the submitted article so that the name would

not likely to be read. It also unclear whether the readership for any of these excerpts is widespread,

or more limited due to the subject matter. In short, taken as a whole, the provided excerpts do not

reflect the type of uses that would outweigh the relative rareness of this surname. The Board made

precisely this point in reversing the surname refusal of AMLIN:

[T]he articles placed into the record by the Trademark Examining

Attorney fall far short of supporting her contention that the surname

“Amlin” commonly appears in newspapers and other media, or of supporting a finding that individuals having this surname have

enjoyed broad exposure to the general public such that “Amlin” is well recognized as a surname.

Amlin, supra. See also Curlin, supra (reversing surname refusal of CURLIN and criticizing the

examining attorney’s evidence because “[i]n the articles where there is some discussion of a person

with the CURLIN surname there is no evidence of any person who has been the subject of media

attention or publicity to the extent that the public perception of CURLIN would be affected.”).

The Examining attorney failed to demonstrate that any of such individuals with surname

RAHMANI the Examining Attorney managed to locate are notable to consumers in the United

States. Applicant does not dispute that there is a small number of people in the United States with

the surname RAHMANI, some of which are briefly mentioned in local newspapers or unverified

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online publications. However, that does not mean Applicant’s applied-for mark RAHMANI is

“primarily merely a surname.”

Applicant submits that the Examining Attorney’s minimal evidence has not established

that the primary significance of the mark RAHMANI would be that of a surname. This factor

weighs heavily in Applicant’s favor.

C. RAHMANI Has Non-Surname Significance

In August 20, 2019 refusal the Examining Attorney agreed with Applicant stating that “The

doctrine of foreign equivalents applies to surname refusals under Trademark Act Section

2(e)(4).” In re Isabella Fiore, LLC, 75 USPQ2d 1564, 1568 (TTAB 2005); see In re Picone, 221

USPQ 93, 94-95 (TTAB 1984); TMEP §1211.01(a)(vii). According to the evidence submitted by

Applicant in response to the refusals, the term “RAHMANI” means “godlike” in Urdu language

which is used by approximately 67 million people in the world and is the fastest growing language

in US. As such, it is reasonable to assume that according to a theory of foreign equivalents an

ordinary an American purchaser” would “stop and translate” the foreign wording “RAHMANI“

in a mark into its English equivalent “godlikenesses”. Based on this Applicant submits the primary

significance cannot be that of a surname, and this statement is corroborated by the evidence

attached to the instant response.

D. RAHMANI Does Not Have The “Look And Feel” Of A Surname

RAHMANI does not look or feel like a surname, particularly in light of its other

references. When such analysis is used, the “look and feel” factor must be weighed “carefully.”

In re Joint-Stock Co. "Baik”. Consideration of the factor here does not favor a surname refusal.

In order to support his factor the Examining Attorney submitted evidence from

LEXISNEXIS shows that a number of individuals possess “the similar sounding surname

“RAHMAN”, which demonstrates that “RAHMANI” has the structure and pronunciation of a

surname.” (see p. 1 of August 20, 2019 office action). No additional evidence or arguments were

presented in regards to “look and feel” factor.

Page 10: ESTTA Tracking number: ESTTA1089575 10/19/2020

It is well established that the mere fact that applicant’s mark has the same structure as

another word that may have the primary significance of a surname, by itself, is not sufficient to

support the refusal in this case. See In re Joint-Stock Co. Baik, 84 USPQ2d 1921, 1924 (TTAB

2007) (Seeherman, J., concurring).

The identical argument presented by the Examining Attorney was rejected in In re Joint-

Stock Co. Baik:

In further support of the refusal to register, the examining attorney introduced evidence

with the final Office action from the Yahoo People Search computer database to show that

“more common” surnames, such as “Paik” and “Bak,” are similar in appearance and sound to BAIK. We note, however, that such evidence reveals approximately 800 individuals

with the surname “Paik,” less than 900 with the surname “Naik,” and 1100 with the surname “Bak.” As such, the examining attorney’s own evidence only suggests that the extremely rare surname Baik is similar to surnames that are almost as rare, i.e., fewer than

3,000 other people in this country. Thus, we are not convinced that the similarity of Baik

to other obscure surnames somehow results in Baik having the “look and feel” of a surname.

Id. at 1924

In the Concurring decision in in In re Joint-Stock Co. Baik, judge Seeherman supported

this position:

I do not think that, in the converse situation, registration should be refused simply because

the mark at issue is similar in sound or appearance to other surnames. The purpose behind

prohibiting the registration of marks that are primarily merely surnames is not to protect

the public from exposure to surnames, as though there were something offensive in viewing

a surname. Rather, the purpose behind Section 2(e)(4) is to keep surnames available for

people who wish to use their own surnames in their businesses, in the same manner that

merely descriptive terms are prohibited from registration because competitors should be

able to use a descriptive term to describe their own goods or services. Because the purpose

of Section 2(e)(4) is not to protect the public from being exposed to surname marks, the

fact that the public may view a mark as a surname because it has the “look and feel” of a surname should not be the basis for refusing registration of rare surnames.

Id. at 1924, 1925

Page 11: ESTTA Tracking number: ESTTA1089575 10/19/2020

Therefore, just like in In re Joint-Stock Co. Baik, if the Examining Attorney resorted to

finding other surnames which rhyme with the mark or differ from the mark by one or two letters,

it is not proper to refuse registration. Interpreting the “look and feel” factor to refuse registration

of marks simply because they are similar to recognized surnames does not serve the intention of

the statute. Otherwise, the approach adopted by the Examining Attorney may lead to absurd

conclusions when a trademark WHEELSUN must be refused under Section 2(e)(4) because it

sounds similar to a common American surname WILSON.

Applicant asserts, that instead of engaging into mental gymnastics of comparing the mark

RAHMANI with some other surname, consumers are likely to view RAHMANI either as a fanciful

term or “stop and translate” it as “godlike” according to the theory of Foreign Equivalents.

Accordingly, this factor too weighs in Applicant’s favor.

CONCLUSION

In view of the fact that (1) RAHMANI is an extremely rare surname, (2) the term

“RAHMANI” has well-established non-surname significance to the mark, (3) RAHMANI does

not have “look and feel” of a surname, Applicant submits that the primary significance of the mark

to the purchasing public would not be that of a surname. Therefore, Applicant respectfully requests

withdrawal of the refusal to register under Section 2(e)(4).

Respectfully submitted,

Lazouski IP LLC

Alexander Lazouski,

Attorney for Applicant

14726 Bowfin Ter., Suite 1,

Lakewood Ranch, FL 34202

Phone: +1 (201) 645-5616

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