The Board affirmed two refusals to register the proposed mark TAPIO for various Internet-related goods and services, finding applicant's identification of goods unacceptably indefinite in part, and deeming the term TAPIO to be primarily merely a surname under Section 2(e)(4). The Board refused to adopt applicant's proposed standard requiring "celebrity status," "national notoriety," or "significant media attention" in order to establish that a surname, although not common, has sufficient public exposure to be deemed primarily merely a surname under Section 2(e)(4). In re tapio GmbH, Serial No. 87941532 (November 23, 2020) [precedential] (Opinion by Judge Melanye K. Johnson).
Indefiniteness in Class 9: Despite three proposed amendments, Applicant was unable to come up with an identification for its class 9 software that satisfied the USPTO. Applicant's original identification of goods read as follows:
The Board found the phrase "devices and services," as it is used in the clause, "cloud based Internet of Things devices and services," to be indefinite because the phrase is so broad that it could include goods or services in more than one class. Subsequent amendment suffered from the same lack of specificity and/or improperly expanded the scope of the goods.
And so the Board affirmed the refusal to register based on the requirement that Applicant provide a more definite identification of its goods in Class 9.
Surname Refusal: The Board applied the ever-popular Benthin factors, which provide "examples of inquiries that may lead to evidence regarding the purchasing public's perception of a term's primary significance."
Frequency and Exposure as a Surname: Examining Attorney Christopher Buongiorno submitted LexisNexis® evidence showing 200 search results out of 374 occurrences of the surname "Tapio," whitepages.com database search results showing 71,018 summary "hits" for the surname "Tapio," six news items referring to five people who appear to be in the United States (including a South Dakota state senator) with the Tapio surname, and a page from the Internet website of one forty-year-old construction business located in Vancouver, Washington using the founder's name, "Tapio." The Board found that this evidence established that the purchasing public is exposed to the surname TAPIO.
Applicant vigorously argued that TAPIO is "an extremely rare surname," citing 2010 Census data showing that the surname "Tapio" ranked at 65,244 in terms of popularity, specifically showing 304 occurrences of the Tapio surname in America. The Board noted, however, that "given the massive number of surnames in the United States, even the most common surname would represent only a small fraction of the U.S. population. In re Gregory, 70 USPQ2d at 1795."
Applicant suggested that "significant media attention" is required when determining whether a rare surname has primary surname significance in the minds of the purchasing public, and it argued that none of the identified individuals has gained any media attention. Moreover, the news items did not appear in widely read publications. Thus, according to applicant, the evidence does not demonstrate widespread exposure to the surname "Tapio."
The Board, however, refused to adopt "a heightened standard requiring 'celebrity status,' 'national notoriety,' or 'significant media attention' in order to find that a surname, although not common, has sufficient public exposure to be primarily merely a surname within the meaning of Section 2(e)(4) of the Trademark Act."
Moreover, the Board observed once again that "[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname." In re Beds & Bars, 122 USPQ2d at 1551. The Board concluded that, although TAPIO is not a common surname, "there is meaningful and fairly widespread public exposure to the surname throughout the United States."
Other Benthin Factors: Applicant stated, without challenge, that no one with the surname TAPIO is associated with it. As to non-surname meanings, Applicant claimed that TAPIO is a coined term, "intended to suggest the functionality of Applicant's software" by "suggest[ing] tapping on a smart phone or tablet, combined with the common computer-related abbreviation 'I/O,' for 'input/output.'" Applicant also claimed that the word TAPIO also "refers to a Finnish forest or spirit god." However, the Board pointed out, there was no evidence that consumers would so perceive TAPIO.
As to structure and sound, TAPIO is "nearly identical to the common surname Tapia," which is not an uncommon surname. The Oxford Reference Dictionary of American Family Names ranks "Tapia" at 3,902 out of over 70,000 surnames, and the surname Tapia is ranked 647th (occurring 17.9 times per 100,000 persons) according to 2010 U.S. Census records for the top 1,000 surnames. "This evidence leads us to conclude that Applicant's mark, TAPIO, has the structure and pronunciation of a surname."
Conclusion; The Board therefore found that TAPIO is primarily merely as surname.
Read comments and post your commenthere.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.