*1 IN RE REBO HIGH DEFINITION STUDIO, INC.
Serial No. 735,795
May 11, 1990
Michael J. Sweedler of Darby & Darby P.C. for applicant.
Before Sams, Seeherman and Hanak
Members
Opinion by Seeherman
Member
Rebo High Definition Studio, Inc. has appealed the refusal of the Examining Attorney to register REBO for high resolution television equipment, namely receivers, cathode ray tubes and fiber optic camera control apparatus. [FN1] Registration has been refused pursuant to Section 2(e)(3) of the Trademark Act on the ground that REBO is primarily merely a surname.
In support of his position the Examining Attorney points to the fact that Rebo is the surname of applicant's president, Barry Rebo. The Examining Attorney has also made of record excerpts from the Atlanta, St. Louis, Seattle and Manhattan telephone directories, the first three, each containing one listing for a REBO while the Manhattan directory has three listings, two of which are for applicant and its president.
The Examining Attorney has also submitted excerpts from the NEXIS database which lists various people with the surname REBO. These excerpts include an article in the New York Times which mentions a musician named Mark Rebo; articles in two different computer magazines which refer to a Richard or Rick Rebo; a Los Angeles Times article listing a Myra Rebo; and a UPI report about a George Rebo. One of the excerpts of record, from Business Week, refers to applicant's president, Barry Rebo, as having opened a high definition television (HDTV) studio which makes TV commercials.
In response to the Examining Attorney's showing, applicant has submitted excerpts from the Los Angeles, Chicago, District of Columbia and Houston telephone directories which indicate that there are no listings for REBO in these cities. Applicant also argues that the purchasing public would not recognize REBO as a surname because it is unfamiliar to most people and appears more like a fanciful term, perhaps an acronym or an abbreviation for some high-technology equipment. Applicant has not, however, provided any basis for this speculation, such as suggesting what REBO might be an acronym or abbreviation for.
The Patent and Trademark Office has the burden of establishing a prima facie case that a term is primarily merely a surname. In re Etablissements Darty et Fils, 759 F.2d 16, 225 USPQ 652 (Fed. Cir. 1985). We believe that the Examining Attorney has met that burden here, and that applicant's submissions and arguments have failed to rebut the Office's prima facie case. In particular, the reference to applicant's president in the Business Week article about high definition television emphasizes the surname significance of REBO in connection with applicant's goods. See, Societe Civile des Domaines Dourthe Freres v. S.A. Consortium Vinicole de Bordeaux, 6 USPQ2d 1205 (TTAB 1988). Further, although the telephone directory listings and NEXIS references are somewhat limited, they do show that, in addition to applicant's president, others in cities in different areas around the country bear the surname REBO, and that people throughout the country have been exposed to this surname connotation by virtue of the references in periodicals with national circulation. Thus, even if REBO is a rare surname, this does not mean that its surname significance would not be recognized by a substantial number of persons. In re Etablissements Darty et Fils, supra. While we readily concede that the evidence of surname significance provided by the Examining Attorney is not extensive, we cannot say that applicant has overcome even this relatively modest showing by the unsubstantiated speculation that it might have a nonsurname significance to the public.
*2 Decision: The refusal to register is affirmed.
J. D. Sams
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 735, 795 filed June 22, 1988 and asserting first use and first in commerce as of January 1988.
DISSENTING OPINION
Hanak
Member
As Professor McCarthy notes, "the determination of whether a mark is 'primarily merely a surname' has given rise to a body of contradictory interpretations and seemingly irreconcilable decisions." 1 J. McCarthy, Trademarks and Unfair Competition, Section 13:11 at page 610 (2d ed. 1984). This decision and dissent will add to that body.
There can be no dispute that REBO is an extremely rare surname. A search of the nation's telephone directories by the Examining Attorney revealed only six listings for REBO, two of which, as the majority notes, are for applicant and its president. [FN1] Obviously, the degree of rarity of a surname has a direct bearing on whether it will be perceived by the public as "primarily merely a surname." In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987) (GARAN held not to be primarily merely a surname despite the fact there were six telephone directory listings of the name); In re Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988) ("The evidence submitted by the Examining Attorney and by applicant proves that 'Pirelli' is a rare surname in the United States. That fact is important in our determination as to whether the primary significance of the mark PIRELLI to purchasers would be that of a surname.").
Given the extreme rarity of the surname REBO, applicant's counsel presents a plausible argument when he states that as applied to high resolution television equipment, REBO "appears more like a fanciful term, perhaps an acronym, or perhaps an abbreviation for some high-technology equipment." (Applicant's brief page 5). In this regard, it is noted that the Acronyms, Initialisms & Abbreviations Dictionary (9th ed. 1985-86) defines REBA as "relativistic electron beam accelerator," and REBE as "recovery beacon evaluation."
In Industrie Pirelli, this Board held that PIRELLI was primarily merely a surname despite the fact that a review of more than 150 telephone directories revealed that PIRELLI was a rarer surname than was KODAK, which is "often cited as the quintessential coined trademark." Industrie Pirelli, 9 USPQ2d at 1565. In so holding, this Board reasoned that unlike the surname KODAK, the surname PIRELLI appeared more like a surname in terms of its "structure and pronunciation." Industrie Pirelli, 9 USPQ2d at 1566.
Given the structure of the short four letter word REBO, I am of the view that this extremely rare surname is more akin to KODAK, and less akin to PIRELLI. That is to say, to most consumers, REBO, when affixed to high resolution television equipment, would not appear as primarily merely a surname. To the extent this may be a close question, I would resolve doubts in favor of publication of this rare surname, just as we resolve doubts in favor of publication in the case of a term which is on the borderline of descriptiveness and suggestiveness. [FN2]
FN1. Indeed, a search of the telephone directories of the nation's second (Los Angeles) and third (Chicago) largest cities revealed no listings for REBO.
FN2. I must disagree with the majority's statement that "the reference to applicant's president in the Business Week article [of January 30, 1989] about high definition television emphasizes the surname significance of REBO in connection with applicant's goods." The entire excerpt from that article, as provided by the Examining Attorney, merely reads as follows: "... will see Crack In The Mirror, a movie produced on HDTV then transferred to conventional film. Its producer, Barry Rebo, opened a small HDTV studio in New York in 1986 and has made more than 25 TV commercials, ..." The foregoing excerpt hardly emphasizes the surname significance of REBO when used in connection with applicant's goods. The foregoing isolated and truncated excerpt is in stark contrast to the situation in Societe Civile v. S.A. Consortium Vinicole, 6 USPQ2d 1205, 1208 (cited by the majority) where the Board noted that applicant had spent over $1,400,000 in advertising and promoting its surname DOURTHE for wine.