Gallo Beware?

by Robert C. Lehrman on March 9, 2009

I am pleased to share a guest post, from Paul Jorgensen. Paul is an attorney in Washington, D.C.

For readers thinking of registering a surname as a trademark for their beverage, please consider a recent case by the judicial branch of the U.S. Patent and Trademark Office (PTO), the Trademark Trial and Appeal Board (TTAB). According to In re Hall Wines, Serial No. 78926151 (February 10, 2009), anything that looks like a surname in your mark must be, above all, unique.
The PTO usually refuses marks that are surnames, reasoning that if the PTO grants registration to that name, others may be unfairly stopped from using their name on their business, products or services. Since distillers and wineries often think of branding their products with family names, famous names, or names of well-known craftsmen, the resulting marks are frequently refused.
So distillers and wineries should have a clear understanding of how the PTO will review their proposed mark. If the PTO thinks your application contains a surname, they will put the proposed mark through four tests, often referred to as Benthin factors after a case with the same name (In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995)):

1. How rare is the surname? The PTO will research this or accept evidence from you that shows how many people have this surname. You should be realistic about rarity: the PTO swiftly pulls information from computer databases. If data reveals that only a few people have the surname in the Mark, the PTO reasons that fewer people will be affected by the registration of the surname as a trademark. Greater rareness, then, increases the chances that the PTO will register your mark.
2. Does anyone connected with the applicant have this name? If you do not volunteer the information, the PTO will ask you this question if they think the pending mark looks like a surname. If you answer no and provide evidence that the apparent surname is simply made up or that it refers to something else (e.g., a historic building), the PTO will be less likely to refuse your mark because it is primarily a surname.
3. Does the word have any other meaning than a surname? You should be ready to explain and provide supporting evidence that the apparent surname in your application has a meaning other than as a surname. For the PTO to accept this, the meaning has to be a “recognized” meaning, indicating that the word would be known by many consumers, not just a small niche of them, as having a non-surname meaning.
4. Does the mark have the “look and sound” of a surname? As this question is more subjective than the others, an applicant with all other factors going in their favor may be wise to prepare a good argument that your mark does not look or sound like a surname. Arguing that the mark as a whole or in part is reminiscent or evocative of something else (a city, a car, an animal, etc.), and supporting that with evidence, will help win this factor.

The PTO (or if you have appealed the PTO’s refusal, the TTAB) will balance these four factors to decide whether the mark should register. Gallo, as you might imagine, seems to be safe from this kind of rejection, likely because the winery registered GALLO marks many years ago and built up fame in those marks. Today, however, other vintners who assume they can get a trademark registration in their name may be in for a surprising rejection.