Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE THE MONOTYPE CORPORATION PLC
Serial No. 689,696
October 31, 1989
Stack & Filpi for applicant
Kathryn A. Dobbs
Trademark Examining Attorney
Law Office 3
(Myra K. Kurzbard, Managing Attorney)
Before Sams, Rice and Seeherman
Members
Opinion by Seeherman
The Monotype Corporation PLC has appealed from the Examining Attorney's refusal to register CALISTO for typefonts, typefaces, and typedesigns and other typographical designs recorded on a data storage medium. [FN1] Registration has been refused pursuant to Section 2(e)(3) of the Trademark Act, 15 U.S.C. 1052(e)(3), on the ground that CALISTO is primarily merely a surname.
We reverse the refusal.
In support of the refusal the Examining Attorney has made of record excerpts from the telephone directories of Philadelphia, Boston and Suburban Maryland (encompassing the environs of Washington, DC) which contain a total of seven listings for people with the surname "Calisto", and two excerpts from articles in the NEXIS data base which refer to two individuals with this surname.
Applicant asserts, on the other hand, that CALISTO is an English variation of "Callisto", and that this is the name of a nymph in Greek mythology and is also the name of one of the moons of Jupiter. Applicant has also submitted evidence that there are no listings for the surname "Calisto" in the telephone directories of Dallas, Milwaukee, Indianapolis, Detroit, Columbus and Chicago. Because of the relatively small number of listings of "Calisto", and the fact that CALISTO is a variant of "Callisto", applicant argues that the primary significance of CALISTO, as used on applicant's products, is either an arbitrary term, the moon of Jupiter or a Greek nymph, and therefore that it is not primarily merely a surname.
As has been stated in previous cases, the question of whether a word sought to be registered is primarily merely a surname can only be resolved on a case by case basis, and the quantum of evidence which was persuasive in finding surname significance in one case may be insufficient in another because of differences in the names themselves. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed.Cir.1985).
In this case, there are a number of reasons which militate against finding that CALISTO is primarily merely a surname. First, the minimal telephone directory evidence, consisting of seven listings, taken in conjunction with the negative evidence produced by applicant, shows that "Calisto" is a rare surname.
Second, the Examining Attorney made only two excerpts from the NEXIS data base of record, although we note that her search for the "keyword" CALISTO uncovered 48 stories. We must conclude that, because the Examining Attorney is presumed to have made the best case possible, the 46 stories not made of record do not support the position that CALISTO is a surname and, indeed, show that CALISTO has nonsurname meanings. [FN2] In re Federated Department Stores, Inc., 3 USPQ2d 1541, 1542 (TTAB 1987).
*2 Third, applicant has indicated that there is a variant spelling of CALISTO (Callisto) which does have other meanings. This is not to say that one can avoid a surname refusal if the surname is the phonetic equivalent of a word with an ordinary meaning. However, we do not think that In re Pickett Hotel Company, 229 USPQ 760 (TTAB 1986), on which the Examining Attorney relies, is applicable to the present situation. While the public would readily recognize that "Pickett" is not the equivalent of "picket", many would not realize that CALISTO is not the "correct" spelling of the mythological name "Callisto". Moreover, it is common knowledge that there are variations in how Greek mythological names are rendered, due presumably to the fact that they are transliterated from the Greek alphabet, and that the spelling may change based on the predilections of the translator or interpreter of the stories.
Finally, there is no evidence that CALISTO is in fact the surname of anyone connected with applicant, nor is there any evidence that surnames have been used as trademarks for typefonts (or related goods), such that the public would attribute a surname significance to CALISTO when it is applied to applicant's goods.
The foregoing reasons, taken together, lead us to conclude that CALISTO is not primarily merely a surname.
Decision: The refusal to register is reversed.
J. D. Sams
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 689,696, filed October 15, 1987 and asserting first use and first use in commerce on October 6, 1987.
FN2. While we do not suggest that all 48 articles need to have been made of record, we think that, if there were additional stories demonstrating the surname significance of CALISTO, the Examining Attorney should have submitted a larger number and indicated whether or not they were representative of the rest.