estta tracking number: estta1089575 10/19/2020
TRANSCRIPT
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
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.
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
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.
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
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
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
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
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.
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
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
$158 $588 $375 $116
Home Dictionaries English to Urdu Godlike Meaning In Urdu
GODLIKE SYNONYMS & DEFINITION
SIMILAR WORDS
GODLIKE MEANING IN URDUFIND GODLIKE DEFINITION & SYNONYMS IN URDU & ENGLISH
KHUDAI خدائی
RABBANI ربانی
RAHMANI رحمانی
godlike
English - Urdu اردو سے انگلش
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• Godlike Meaning In English1. (a.) Resembling or befitting a god or God; divine; hence, preeminently good; as, godlike virtue.
Synonyms:
GODLIKENESS
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Godlike Meaning in Urdu
Godlike Meaning in Urdu: Searching meanings in Urdu can be beneficial for understanding the context in an e icient manner. You can get
more than one meaning for one word in Urdu. You have searched the English word "Godlike" which means "خدائی" Khudai in Urdu. Godlike
meaning in Urdu has been searched 2008 (two thousand and eight) times till 24 Jul, 2019. You can find translation in Urdu and Roman Urdu
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RubaiRubai ررRahmaniRahmani رر
Rahmani English Meaning - Translate Rahmani (Godlikenesses) into English from Urdu
Roman Urdu WordRoman Urdu Word RahmaniRahmani
English WordEnglish Word GodlikenessesGodlikenesses
Urdu MeaningUrdu Meaning رر
Rahmani Meaning from Urdu to English is Godlikenesses, and in Urdu it is written as ربائی. This word is written in Roman Urdu.
Rahmani Meaning in English - Find the correct meaning of Rahmani in English, it is important to understand the word properly when we translate it from
Urdu to English. There are always several meanings of each word in English, the correct meaning of Rahmani in English is Godlikenesses, and in Urdu
we write it ربائی. After Urdu to English translation of Rahmani, If you have issues in pronunciation than you can hear the audio of it in the online
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