What's in a name: "Valverde" is not primarily merely a surname
To increase the likelihood of successful trademark registration with the U.S. Patent and Trademark Office, applicants are often advised to select marks that are fanciful, arbitrary or suggestive, and to screen those marks in order to identify other potentially conflicting marks. Applicants may also want to consider screening their marks to confirm whether the mark would be perceived by consumers as a surname.
Spumador S.P.A. filed an application to register the mark “Valverde” for mineral waters and other beverages, but the examining attorney refused registration of the application on the ground that the proposed mark was primarily merely a surname. On appeal, Board found:
- “Valverde” was a surname and that it was not a rare surname;
- “Valverde” was Spanish for “green valley”; and
- There was no support for Spumador’s argument that “Valverde” was recognized by consumers as a geographic location and, to the extent that there was any recognition of “Valverde” as a location, it could support the conclusion that “Valverde” would be viewed as a surname because locations are often named after individuals.
In short, the Board found the evidence of “Valverde” as a surname was greater than the evidence that the term had any other significance. However, the Board also found that “Valverde” looked and sounded like a foreign word rather than surname. Thus, it concluded that “Valverde” was not primarily merely a surname.
Although Spumador prevailed in this case, applicants should consider whether their potential marks would be perceived primarily as a surname by consumers.
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