Caruso Property Management, Inc.

Trademark Trial and Appeal Board

Jul 6, 2016

No. 86068166 (T.T.A.B. Jul. 6, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: July 6, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Caruso Property Management, Inc.
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Serial No. 86068166
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Bryan P. Stanley of Kutak Rock LLP,
for Caruso Property Management, Inc.
Cheryl Clayton, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Kuhlke, Kuczma and Adlin,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Caruso Property Management, Inc. (“Applicant”) seeks registration on the
Principal Register of the mark CARUSO HOTELS AND RESORTS (in standard
characters) for:
Hotel and resort services in International Class 43.1

1 Application Serial No. 86068166 was filed on September 18, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. HOTELS AND RESORTS is disclaimed.
Serial No. 86068166
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(e)(4), 15 U.S.C. § 1052(e)(4), on the ground that the applied-for mark
is primarily merely a surname.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. Applicant and the Trademark Examining Attorney have filed
briefs. For the following reasons, we affirm the refusal to register.
I. Evidentiary Issue
Applicant submitted with its appeal brief an article from Wikipedia regarding a
song entitled “Caruso” that was not previously made of record (see Exhibit A to
Applicant’s Brief). The Trademark Examining Attorney objects to this evidence on
the ground that it is untimely.
Trademark Rule 2.142(d), 37 CFR 2.142(d), provides that the record in the
application should be complete prior to the filing of an appeal, and that the Board
will ordinarily not consider additional evidence after the appeal is filed. Accordingly,
given Applicant’s untimely submission of Exhibit A with its brief, the Trademark
Examining Attorney’s objection is sustained, and we have not considered this
evidence.
II. Section 2(e)(4) Primarily Merely a Surname
The primary significance of the mark to the purchasing public determines whether
it is primarily merely a surname. In re Hutchinson Technology, Inc., 852 F.2d 552, 7
USPQ2d 1490, 1492 (Fed. Cir. 1988); Miller v. Miller, 105 USPQ2d 1615, 1619 (TTAB
2013); In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009).
Serial No. 86068166
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The question whether a word sought to be registered is primarily merely a
surname can only be resolved on a case by case basis focusing on the term’s primary
significance to the purchasing public. In re Etablissements Darty et Fils, 759 F.2d 15,
225 USPQ 652, 654 (Fed. Cir. 1985). The USPTO has the burden of establishing a
prima facie case that a term is primarily merely a surname. Id. at 653. If the
trademark examining attorney makes that showing, then we must weigh all of the
evidence from the trademark examining attorney and the applicant, to determine
ultimately whether the mark is primarily merely a surname. See In re Joint-Stock
Co. “Baik,” 84 USPQ2d 1921, 1922 (TTAB 2007); In re Sava Research Corp., 32
USPQ2d 1380, 1381 (TTAB 1994). If there is any doubt, we must resolve it Applicant’s
favor. See In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995).
The Trademark Examining Attorney submitted a computerized research report
showing that CARUSO ranks as the 1,621st “most popular last name” in the United
States and that 23,919 persons in the United States share the surname CARUSO;2 a
dictionary definition for “Caruso, Enrico” an Italian operatic tenor who died in 1921;3
a page from a surname dictionary showing that CARUSO is an American surname of
Italian origin;4 and excerpts from the White Pages (www.whitepages.com) indicating

2 7/21/2014 Office Action p. 6, HowManyOfMe.com from http://howmanyofme.com/search/
07/21/2014.
3 12/22/2013 Office Action, p. 4, Dictionary.com Unabridged. Based on the Random House
Dictionary, © Random House, Inc. 2013.
4 Attachment to Examiner’s Brief. The Examining Attorney’s request that the Board take
judicial notice of the dictionary definition for the surname “Caruso” from the Oxford
University Press 2003, Dictionary of American Family Names, Volume One A-F, is granted.
The Board may take judicial notice of dictionary evidence. University of Notre Dame du Lac
Serial No. 86068166
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“100 results for Caruso” and listing the names of fourteen people across the country
with the surname CARUSO.5 Additionally, the listing of “Caruso” in Wikipedia shows
that one of its meanings is that of a surname.6
Applicant argues that even if approximately 24,000 people have the surname
Caruso, it is less than one-hundredth of one percent of the approximately 320 million
people in the United States. Therefore, while admitting that “Caruso” is a surname,
Applicant contends that CARUSO is a relatively rare surname.7
The issue of determining whether a surname is common or rare is not determined
solely by comparing the number of listings of the surname with the total number of
listings, because given the large number of different surnames in the United States,
even the most common surname would represent only a small fraction of the
population. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004). Moreover, even rare
surnames may be unregistrable and there is no minimum number of directory listings
required to establish a prima facie case for refusal of registration. See In re Industrie
Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988). In view of the evidence
submitted and Applicant’s admission of the surname significance of CARUSO,
“Caruso” is a surname.

v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983). See also TBMP § 1208.04 (June 2016).
5 12/22/2013 Office Action, pp. 6-8, White Pages from http://www.whitepages.com/name/
caruso/ 12/22/2013.
6 7/21/2014 Final Office Action, p. 5, from Wikipedia http://en.wikipedia.org/wiki/Caruso
07/21/2014.
7 Applicant’s Brief p. 6 (4 TTABVUE 7).
Serial No. 86068166
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Applicant contends that even though CARUSO is the surname of one of its
principals this does not establish that the applied-for mark is viewed primarily as a
surname by the relevant purchasing public.8 Applicant notes that consumers rarely
know the names of the principals of a corporation, pointing out that the Trademark
Examining Attorney provided no evidence that the consuming public is even aware
of the connection between Applicant and Mr. Caruso.9 However, in this case,
CARUSO is not only the surname of Applicant’s principal, it is also the most
important part of the Applicant’s trade name, Caruso Property Management, Inc.,
and more importantly, of Applicant’s involved mark, and in both it is used as
surnames are typically used in trade names with similar structures.
The evidence from the Dictionary of American Family Names indicates that
CARUSO is an Italian word for a
“nickname from caruso ‘close-cropped’…” and “[t]his word
was also used in the more general sense ‘boy’, ‘lad’, since in
the Middle Ages young men of fashion sometimes wore
their hair much shorter than was the prevailing style. In
the Girgenti area of Sicily the term was a metonymic
occupational name for a worker in the sulfur pits, since
such workers were required to wear their hair short.”10
The Wikipedia evidence also refers to

8 Applicant’s Brief pp. 5-6 (4 TTABVUE 6-7); Examining Attorney’s Appeal Brief (6
TTABVUE 7).
9 Applicant’s Brief pp. 6-7 (4 TTABVUE 7-8).
10 See attachment to Examining Attorney’s Appeal Brief from Dictionary of American Family
Names, Oxford University Press 2003 (6 TTABVUE 13-16).
Serial No. 86068166
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“‘caruso’ (uncapitalized), as an Italian noun derived from
the Sicilian language referring to ‘dear boy’ as a reference
to a mine laborer.”11
When, as here, the term has a meaning in a foreign language, we consider the
meaning’s significance in the United States. In re Isabella Fiore LLC, 75 USPQ 1564,
1568 (TTAB 2005). The doctrine should be applied only when it is likely that the
ordinary American purchaser would stop and translate the word into its English
equivalent. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (Citations and internal
quotation marks omitted). If there is a readily recognized meaning of the term apart
from its surname significance, registration should be granted. Cf. In re Nelson Souto
Major Piquet, 5 USPQ2d 1367, 1367-68 (TTAB 1987) (fact that “Piquet” was “the
name of a relatively obscure card game is unlikely to be known to purchasers and is
certainly not the ordinary meaning of the term).
Here, few people could be expected to know that the surname “Caruso” derives
from “caruso,” an Italian/Sicilian historical noun referring to “boy” in the general
sense and to “dear boy” as a reference to a historical mine laborer. That the surname
“Caruso” also has this obscure meaning does not detract from its primary surname
significance. Many surnames of foreign origin have obscure meanings which lose out
to the primary surname significance. See In re Spirits International N.V., 86 USPQ2d
1078, 1085 (TTAB 2008); In re Isabella Fiore LLC, 75 USPQ 1564, 1568 (TTAB 2005);
In re Advanced Spine Fixation Systems, Inc., 25 USPQ2d 1367, 1369 (TTAB 1992).

11 7/21/2014 Final Office Action, p. 5. Wikipedia; Applicant’s Brief p. 6 (4 TTABVUE 7).
Serial No. 86068166
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When CARUSO is used for the name of a hotel, it would be much more likely to
be perceived as a surname, perhaps the owner’s, than as conveying that a “dear boy”
operates or provides the name for the hotel. In short, the absence of evidence showing
that CARUSO has a readily recognized meaning apart from its surname significance
favors a finding that it is a primarily merely a surname.
Lastly, Applicant contends that its mark is not primarily merely a surname
because CARUSO identifies Enrico Caruso, “1873-1921 an outstanding Italian
operatic tenor.”12 However, the fact that an individual is famous in a particular field
generally will not dissipate the term’s primary significance as a surname. See In re
Binion, 93 USPQ2d at 1537-38; In re Thermo LabSystems, Inc., 85 USPQ2d 1285,
1289 (TTAB 2007). There is a difference between being an individual that has made
a historically significant contribution and being an individual that has achieved such
renown as to become an historical figure. In re Thermo LabSysems, Inc., 85 USPQ2d
at 1289. The evidence of record does not support that the primary significance of
CARUSO for Applicant’s hotel and resort services is Enrico Caruso.
In considering the mark as a whole, we find that the wording HOTELS AND
RESORTS does not change the significance of the mark. Combining a surname, such
as CARUSO, with the generic name for the goods and/or services, i.e., HOTELS AND
RESORTS, does not overcome the mark’s surname significance. See In re Woolley’s

12 12/22/2013 Office Action p. 4, from Dictionary.com based on Collins English Dictionary-
Complete & Unabridged 10th Edition, 2009 © William Collins Sons & Co. Ltd. 1979, 1986 ©
HarperCollins Publishers 1998, 2000, 2003, 2005, 2006, 2007, 2009 and Random House
Dictionary, ©Random House, Inc. 2013. Applicant’s Brief p. 7 (4 TTABVUE 8).
Serial No. 86068166
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Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (holding WOOLLEY’S PETITE SUITES
for hotel and motel services primarily merely a surname); see also Mitchell Miller,
P.C. v. Miller, 105 USPQ2d 1615, 1622 (TTAB 2013) (holding MILLER LAW GROUP
primarily merely a surname for legal services, noting that LAW GROUP is a generic
designation for a law firm); In re Hamilton Pharms. Ltd., 27 USPQ2d 1939, 1944
(TTAB 1993) (holding HAMILTON PHARMACEUTICALS primarily merely a
surname for pharmaceutical products); In re Cazes, 21 USPQ2d 1796, 1797 (TTAB
1991) (holding BRASSERIE LIPP primarily merely a surname for restaurant
services).
In view of the foregoing, CARUSO HOTELS AND RESORTS is primarily merely
a surname as contemplated under § 2(e)(4). The evidence of record shows that
CARUSO is a surname, and Applicant concedes this. Moreover, the terminology
HOTELS AND RESORTS is generic wording that has been disclaimed. Thus, the
primary significance of CARUSO HOTELS AND RESORTS is that of a surname.
Decision: The refusal to register Applicant’s mark CARUSO HOTELS AND
RESORTS under Section 2(e)(4) is affirmed.