Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE SAVA RESEARCH CORPORATION
Serial No. 74/281,655
July 29, 1994
Jeffrey R. Cohen
Trademark Examining Attorney
Law Office 4
(Sharon R. Marsh, Managing Attorney)
Before Hanak, Quinn and Hohein
Administrative Trademark Judges
Opinion by Hanak
Administrative Trademark Judge
Sava Research Corporation (applicant) seeks to register SAVA for secure communication systems. The intent-to-use application was filed on June 5, 1992.
The Examining Attorney refused registration pursuant to Section 2(e)(3) of the Lanham Trademark Act [15 USC 1052(e)(3) ] on the basis that SAVA is primarily merely a surname.
When the refusal was made final, applicant appealed to this Board. Applicant and the Examining Attorney filed briefs. Applicant did not request an oral hearing.
With his first Office Action, the Examining Attorney attached excerpts from nine selected stories which the Examining Attorney retrieved from the NEXIS data base when the term SAVA was searched. The first page of the NEXIS search indicates that there were 1,762 stories containing the term SAVA. On this first page, the Examining Attorney wrote the following statement: "The attached cites are merely representative of the more than 1,700 available cites."
A review of the nine excerpts shows that only two use SAVA as a surname. These two stories refer to the same individual, namely, Samuel G. Sava, Executive Director of the National Association of Elementary School Principals. In the other seven stories, the term SAVA is used to refer to a town in Israel, a river in Bosnia, a Detective Constable Savas Kyriadou and a legal case, Sava v. General Electric Co. [FN1]
In response, applicant submitted photocopies of the pertinent pages from A Dictionary of Surnames (Oxford University Press), American Surnames (Chilton Book Company) and New Dictionary of American Family Names (Harper & Rowe) showing that SAVA is not listed in any of them. Moreover, applicant attached photocopies of the pertinent pages from the White Pages for Tampa and St. Petersburg (applicant's principal place of business) showing that SAVA was not listed as a surname in either directory. Applicant also stated that "SAVA is not the surname of anyone associated [with] or employed by applicant," and that in point of fact, "SAVA is a coined word that was developed by applicant from the slogan Securing America's Valuable Assets." (Applicant's response dated September 23, 1992 at page 3). In this regard, it must be remembered that the goods for which applicant seeks registration are secure communication systems.
In the second Office Action, the Examining Attorney attached a printout from the PHONEDISC U.S.A. data base (1992 ed.) which the Examining Attorney contends shows "that at least 100 different SAVAs live throughout the United States." (Examining Attorney's brief pages 2-3). The preface to the PHONEDISC U.S.A. data base (1992 ed.) states that "listings making up the data base were gathered from approximately 5,000 U.S. address lists and telephone directories including a total of over 90,000,000 listings."
*2 At the outset, we note that "the PTO [has] the burden of establishing a prima facie case that [SAVA] is 'primarily merely a surname.' " In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed.Cir.1985). Moreover, "the question of whether a word sought to be registered is primarily merely a surname within the meaning of the statute can be resolved only on a case by case basis," taking into account a number of various factual considerations. Darty et Fils, 225 USPQ at 653. See also 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition Section 13.11[3] at pages 13-55 to 13-58 (3d ed. 1992).
One factor that weighs in favor of a finding that SAVA is not primarily merely a surname is that "there is no evidence that [SAVA] is in fact the surname of anyone connected with applicant." In re Monotype Corp., 14 USPQ2d 1070, 1071 (TTAB 1989). Indeed, applicant has stated that "the mark SAVA is not the surname of anyone associated [with] or employed by applicant."
A second factor weighing against a finding that SAVA would be perceived as primarily merely a surname is the fact that SAVA "does have other meanings." Monotype, 14 USPQ2d at 1071; In re BDH Two Inc., 26 USPQ2d 1556, 1558 (TTAB 1993). In this regard, we have given little weight to the fact that SAVA is the name of a town in Israel and a river in Bosnia. We think that these meanings would most likely not be known to American purchasers of applicant's secure communication systems. However, applicant has also explained that SAVA is an acronym for "Securing America's Valuable Assets." We think that to purchasers of secure communication systems, SAVA does have the look and sound of an acronym, and that applicant's explanation as to the meaning of SAVA is quite plausible.
A third factor which we must consider is "the degree of a surname's rareness." In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987). At first blush, the material from the PHONEDISC U.S.A. data base (1992 ed.) showing "that at least 100 different SAVAs live throughout the United States" would indicate that SAVA is not an extremely rare surname. However, it must be remembered that this data base includes over 90,000,000 listings. Thus, the uses of SAVA as a surname represent about only one ten-thousandth of one percent of the surnames in this data base.
Moreover, the Examining Attorney's search of the massive NEXIS data base revealed only one individual with the surname SAVA (i.e. Samuel G. Sava). In addition, applicant has made of record the pertinent pages from three large surname dictionaries, and not one of these three dictionaries lists SAVA as a surname.
In light of the foregoing, we find that SAVA is indeed a rare surname, and that this factor weighs in favor of a finding that it would not be perceived as primarily merely a surname.
*3 In sum, given the fact that no one associated with applicant has the surname SAVA; the fact that SAVA would be perceived by American purchasers of secure communication systems as having a meaning other than that of a surname; and the fact that SAVA is indeed a rare surname, we find that SAVA would not be perceived as primarily merely a surname.
Decision: The refusal to register is reversed.
E.W. Hanak
T.J. Quinn
G.D. Hohein
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. The case cite does not reveal whether SAVA is used as a surname or as a company name.