Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE RAYMONDE MARIE CAZES
Serial No. 73/774,363
August 20, 1991
Edward J. Handler, III of Kenyon & Kenyon for applicant
Tina M. Pompey
Trademark Examining Attorney
Law Office 7
(David Shallant, Managing Attorney)
Before Sams, Rooney and Seeherman
Members
Opinion by Seeherman
Raymonde Marie Cazes has applied to register the mark BRAS-SERIE LIPP for restaurant services pursuant to Section 44(e) of the Trademark Act. [FN1] Applicant stated that the literal translation of BRASSERIE is "brewery," but that the word has become associated with French-style restaurant services, and accordingly applicant has disclaimed exclusive rights to use it.
Registration was refused on the ground that the mark is primarily merely a surname, Section 2(e)(3) of the Trademark Act, 15 U.S.C. 1052(e)(3), and applicant has appealed.
In support of her position the Examining Attorney has made of record excerpts from the Brooklyn, Pittsburgh and Chicago telephone directories which contain 23 listings for individuals with the surname "Lipp," and excerpts of articles taken from the NEXIS data base which contain references to another ten individuals with this surname. [FN2] Applicant has also submitted an excerpt from American Surnames which indicates that Lipp is a surname of German derivation, and a dictionary definition showing that "brasserie" means "a restaurant offering alcoholic beverages, esp. wine or beer." [FN3].
In response to this showing applicant has submitted a page from an acronym and abbreviations dictionary [FN4] which lists, for the term LIPP, "Lippincott's Monthly [A publication]" and "Padova [Italy] [ICAO location identifier]. Applicant has also submitted excerpts from articles taken from the NEXIS data base, one of which mentions a "Lipp Holmfeld from Denmark" and many others which make reference to the BRASSERIE LIPP in Paris. Applicant has also explained that her restaurant in Paris, BRASSERIE LIPP, was founded by Leonard Lipp, although the name Lipp was not used for the restaurant until World War I, and that during the entire period that the restaurant has been called BRASSERIE LIPP no one named Lipp has been connected with it.
It is the burden of the Patent and Trademark Office to establish a prima facie case that a term is primarily merely a surname. In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed.Cir.1985). We find that the Examining Attorney has met this burden by the evidence of surname usage of Lipp which she has submitted. Although applicant has argued that an "unusually large number of listings" is required to satisfy the Examining Attorney's burden, that statement is, in fact, not accurate. Even a rare surname is unregistrable if its primary significance to purchasers is as a surname, and there is no minimum number of directory listings required to establish a prima facie case for refusal of registration under Section 2(e)(3). In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988).
*2 Applicant also argues that the Office has not satisfied its burden because, even if "LIPP" may be a surname, the Examining Attorney has not shown that the mark as a whole, i.e., BRASSERIE LIPP, is primarily merely a surname. We disagree. The dictionary definition of "brasserie," demonstrates that "brasserie" is a generic term for applicant's restaurant services. [FN5] The addition of this generic term to LIPP does not alter the primary significance of the mark as a surname. See, In re Possis Medical, Inc., 230 USPQ 72 (TTAB 1986) (POSSIS PERFUSION CUP held primarily merely a surname); In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986) (PICKETT SUITE HOTEL held primarily merely a surname); In re E. Martinoni Co., 189 USPQ 589 (TTAB 1975) (MARTINONI LIQUORE held primarily merely a surname). On the contrary, BRASSERIE LIPP would be perceived as a brasserie owned by a person named LIPP, [FN6] and the surname significance of BRASSERIE LIPP would be evident. This case is distinguishable from In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed.Cir.1988) because the word TECHNOLOGY in the mark HUTCHINSON TECHNOLOGY was found to be not even merely descriptive, let alone generic, of the party's goods.
This brings us to the evidence which applicant has submitted. The limited evidence of the listings in the acronym and abbreviation dictionary and the one reference to a Danish girl are hardly sufficient to rebut the Examining Attorney's prima facie case. The average person is not likely to view "Lipp" as an abbreviation for a publication or for what, according to applicant, is an airport in Padova, Italy. Nor does the single reference to a girl with the name Lipp Holmfeld show either that Lipp can be considered a given name or that the public would be aware of such a given name. See, In re British Oxygen Co. Ltd., 161 USPQ 242 (TTAB 1969) (average person would not be aware of fact that Boyle is the name of town in Mississippi, Ireland or Alberta).
Applicant's major argument is that the primary significance of LIPP, and of BRASSERIE LIPP, is as the trademark of her restaurant in Paris, and to that effect she has submitted excerpts from a number of articles which refer to the BRASSERIE LIPP and which have appeared in newspapers in the United States.
Applicant's argument is, essentially, that LIPP or BRASSERIE LIPP is no longer primarily merely a surname because the significance of the term is now that of a mark for her restaurant services. The difficulty with this argument is that applicant has not claimed the benefits of Section 2(f) of the Act and, without a formal claim of distinctiveness under this section, evidence of fame cannot serve as the basis for allowing registration of applicant's mark. [FN7] In re Industrie Pirelli, supra; In re McDonald's Corp., 230 USPQ 304 (TTAB 1986).
*3 Accordingly, we find that BRASSERIE LIPP is primarily merely a surname.
Decision: The refusal of registration is affirmed.
J. D. Sams
L. E. Rooney
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1 Application Serial No. 73/774,363, filed January 12, 1989, based on a French registration dated October 19, 1981.
FN2 We have not treated the references in NEXIS articles to businesses containing "Lipp" as part of their names and to an individual who uses "Lipp" as part of a hyphenated surname as evidence of surname use.
FN3 Webster's II New Riverside University Dictionary, Copr.1984.
FN4 Acronyms, Initialisms & Abbreviations Dictionary, 13th ed., 1989.
FN5 Applicant's disclaimer of BRASSERIE, and her reasons for agreeing to the disclaimer, are further evidence of the generic nature of the word.
FN6 We note applicant's argument that at the time the name BRASSERIE LIPP was adopted no one named Lipp was associated with the restaurant. However, the issue is how the mark is perceived, and the perception would be that of a surname. Further, the fact that the brasserie was founded by a person named Lipp reinforces the surname significance of the mark.
FN7 We note applicant's statement in her reply brief that she has argued the renown of her mark beginning in her response to the first Office Action. However, although during prosecution applicant stated that the primary significance of LIPP is as an indication of origin of her goods and services, applicant never advised the Examining Attorney that she was seeking registration pursuant to the provisions of Section 2(f). Indeed, it is difficult to see how such a claim could be made, since Section 2(f) refers to registration of marks which have become distinctive of the applicant's goods or services in commerce, and applicant's application is based, not on use in commerce, but on a French registration.