No summary, proceed to other tabs.

Click the topic headings to navigate through the cases and quotes concerning that topic.
Expand All | Contract All

  • A personal name mark, unless it is primarily merely a surname, is registrable on the Principal Register without a showing of secondary meaning, and thus is deemed to be inherently distinctive under the Lanham Act if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the person.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • A personal name mark, unless it is primarily merely a surname, is registrable on the Principal Register without a showing of secondary meaning, and thus is deemed to be inherently distinctive under the Lanham Act if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the person. Compare In re Carson, 197 USPQ 554 (TTAB 1977) (JOHNNY CARSON registrable as a service mark where name featured in advertisements for services) and In re Ames, 160 USPQ 214 (TTAB 1968) (NEAL FORD & THE FANATICS registrable as a service mark where name was used on advertisements that prominently featured a photograph of the group and gave the name, address and telephone number of the group's booking agent), with In re Mancino, 219 USPQ 1047 (TTAB 1983) (BOOM BOOM would be viewed by the public solely as applicant's professional boxing nickname and not as an identifier of the service of conducting professional boxing exhibitions) and In re Lee Trevino Enterprises, Inc., 182 USPQ 253 (TTAB 1974) (LEE TREVINO not registrable where specimens of use only identify a famous golfer not services). See also TMEP Section 1301.02(b).
  • Case Finding: Applicant cites to various authorities that personal name marks are merely descriptive and not entitled to protection absent a showing of secondary meaning. However, applicant has not cited to any prior decisions of the TTAB or of its primary reviewing court in which this proposition has been stated or followed, and we are aware of no such decisions.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • Applicant cites to various authorities that personal name marks are merely descriptive and not entitled to protection absent a showing of secondary meaning. However, applicant has not cited to any prior decisions of the Board or of its primary reviewing court in which this proposition has been stated or followed, and we are aware of no such decisions.4 For the reasons discussed below, we are not persuaded that we should follow the authorities cited by applicant on this issue. FOOTNOTE 4 "We note that the Seventh Circuit recognizes some limitation to the general requirement that secondary meaning be shown for a personal name, for such name to be protectible in an infringement case focusing on use, rather than registration of the mark. In Peaceable Planet Inc. v. Ty Inc., 363 F.3d 986, 70 USPQ2d 1386, 1389-90 (7th Cir. 2004), the court stated: "The "rule" that personal names are not protected as trademarks until they acquire secondary meaning is a generalization, and its application is to be guided by the purposes that we have extracted from the case law. When none of the purposes that animate the "personal name" rule is present, and application of the "rule" would impede rather than promote competition and consumer welfare, an exception should be recognized. And will be; for we find cases holding, very sensibly – and with inescapable implications for the present case – that the "rule" does not apply if the public is unlikely to understand the personal name as a personal name. [citations omitted] The personal-name "rule," it is worth noting, is a common law rather than statutory doctrine. All that the Lanham Act says about personal names is that a mark that is "primarily merely a surname" is not registrable in the absence of secondary meaning. There is no reference to first names... The extension of the rule to first names is a judicial innovation and so needn't be pressed further than its rationale, as might have to be done if the rule were codified in inflexible statutory language. Notice too the limitation implicit in the statutory term "primarily."... Treating the personalname rule as a prohibition against ever using a personal name as a trademark (in the absence of secondary meaning) would lead to absurd results, which is a good reason for hesitating to press a rule to its logical limit, its semantic outer bounds.""
  • A party may develop a trade identity in the mark through his use of this phrase as a trade name.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • As part of our finding above, we have determined that opposer "developed a trade identity," in THE CAB CALLOWAY ORCHESTRA through his use of this phrase as a trade name. Otto Roth & Company, Inc. v. Universal Foods Corporation, 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981).
  • Unfair to attempt to tack on purported prior use to establish prior common law rights in direct contradiction to a signed stipulation of the fact of the earliest date if first use.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • Finally, applicant's attempt to tack on purported prior use to establish prior common law rights is in direct contradiction to the stipulation it signed whereby applicant stipulated, as fact, that the earliest date upon which it may rely is July 23, 1999. Applicant has not shown good cause to be relieved of this stipulation and such withdrawal made at briefing, after trial, would unfairly prejudice opposer. See American Honda Motor Co., Inc. v. Richard Lundgren, Inc., 314 F.3d 17 (1st Cir. 2002) (citing New Hampshire v. Maine, 532 U.S. 742 (2001)). In view thereof, we hold applicant to that stipulated fact.
  • An organization need only to have used a name or acronym in a manner that identifies the company by that name or acronym to the public.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • In addition, we find that the record also supports use as a trade name and, again, opposer's use as a trade name is prior to applicant's filing date.7 "An organization need only to have used a name or acronym in a manner that identifies the company by that name or acronym to the public." National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1428 (Fed. Cir. 1991). See also West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1122, 1665 (Fed. Cir. 1994) ("In this case, the fact that a public health food inspector believed that the restaurant he was inspecting went by the name ‘Fast Eddie's' is overwhelming evidence that West was identifying its restaurant to the public as ‘FAST EDDIE'S.'")
  • Discussion of the history of the registration of a merk consisting merely of the name of an individual.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • "In finding "Andre Dallioux" registrable for traveling bags and ladies' hand bags because it comprised an entire name of an individual, the Commissioner stated: ""Under the provisions of the Trade Mark Act of 1905, "registration of a mark which ... consists merely of the name of an individual" was prohibited unless it was printed in such a manner as to comply with certain exceptions set out in section 5 of that Act. The Act was further construed to prohibit registration of marks consisting of surnames, refusal being based upon the construction that a surname constituted the major portion of an individual name, and accordingly was within the prohibition as to the "name of an individual" above quoted...Thus under the Act of 1905, registration of marks consisting of names of individuals, including surnames, was prohibited. In the corresponding section of the Trade Mark Act of 1946, section 2(e), there is no reference to "merely the name of an individual" in specifying the types of marks which shall be refused registration on account of their nature and, in place thereof, section 2 provides that "no trade mark ... (3) is primarily merely a surname." It thus continued to require refusal of registration of marks which consisted merely of surnames, which the court referred to as "the significant portion of the name," in The American Tobacco Co. v. Wix, supra, but eliminated the requirement of refusal of one consisting of "the name of an individual." To refuse registration of the mark as shown in the drawing would be in effect to continue the rule of the Act of 1905, even though the prohibition against registration of a mark consisting of the name of an individual (which included surnames but was not restricted thereto), no longer remains in the law.... It is to be noted that the mark presented is used as a trade mark. A different situation might well be presented in the event an individual name was not used as a trade mark, as for example, if it were used merely as a part of the name and address of the manufacturer rather than as a trade mark."" Ex Parte Dallioux, 83 USPQ 262, 263 (Comm'r 1949). See also Ex Parte Rivera Watch Corp., 106 USPQ 145 n. 9 (Comm'r 1955) ("The discussions also indicate an intent to permit an applicant to register his own full name, but the language finally adopted in Sec. 2(e) does not necessarily permit such a broad interpretation. When read in conjunction with Sec. 2(c), however, such intent probably was expressed, although in a somewhat negative manner.")"
  • The proper focus of §2(d) is not on "mark" or "trade name," but upon the phrase, "likely to cause confusion, or to cause mistake, or to deceive" and confusion, or a likelihood thereof, is not recognized where one claiming to be aggrieved by that confusion does not have a right superior to his opponent's, or where he has not proved that that which he claims identifies him as the source of goods or services actually does so.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • In its decision, the Court specifically "exlud[ed]...other means of trade identification" and "focus[ed] on trademarks." Id. at 44. However, the Court stated that: "[the] proper focus of §2(d) is not on "mark" or "trade name," but upon the phrase, "likely *** to cause confusion, or to cause mistake, or to deceive" [and] confusion, or a likelihood thereof, is not recognized where one claiming to be aggrieved by that confusion does not have a right superior to his opponent's, or where he has not proved that that which he claims identifies him as the source of goods or services actually does so." Id. at 44.
  • Trade identity rights arise when the term is distinctive, either inherently or through the acquisition of secondary meaning.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • More recently the Court in Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001) stated: "Hoover, as the party opposing registration on the basis of likelihood of confusion with its own mark, must establish that "Number One in Floorcare" is distinctive of its goods either inherently or through the acquisition of secondary meaning. See Towers v. Advent Software, Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990). Hoover's attempt on appeal to characterize its slogan as a trade identity does not relieve it of the burden of establishing distinctiveness. See id. at 946, 16 USPQ2d at 1041. "[T]rade identity rights arise when the term is distinctive, either inherently or through the acquisition of secondary meaning.""
  • In those situations on which a party relies upon trade name use in support of its claim of damage, as in the case of reliance on a trademark or service mark, the trade name, per se, or the salient feature of the trade name must be of such a nature that the use thereof by the opposer would have been sufficient to create a proprietary right therein, namely, an association by the applicable trade of the name or term exclusively with opposer and its products. As previously indicated, without such an association, the likelihood of confusion would appear to be remote, if not nonexistent.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • Shortly after the Otto Roth decision issued, the Board had occasion to address this issue in the context of trade name use. In Fluid Energy Processing & Equipment Co. v. Fluid Energy, Inc., 212 USPQ 28 (TTAB 1981) the applicant sought to register "FLUID ENERGY" and opposer brought a claim of likelihood of confusion under Section 2(d) and asserted prior trade name use of "Fluid Energy" to establish its priority. In citing Otto Roth, the Board stated: "In those situations on which a party relies upon trade name use in support of its claim of damage, as in the case of reliance on a trademark or service mark, the trade name, per se, or the salient feature of the trade name must be of such a nature that the use thereof by the opposer would have been sufficient to create a proprietary right therein, namely, an association by the applicable trade of the name or term exclusively with opposer and its products. As previously indicated, without such an association, the likelihood of confusion would appear to be remote, if not nonexistent." Id. at 35.
  • The opposer must prove he has proprietary rights in the term he relies upon to demonstrate likelihood of confusion as to source, whether by ownership of a registration, prior use of a trade name, or whatever other type of use may have developed a trade identity.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • "Since Alfred Electronics, the Federal Circuit issued its decision in Otto Roth, wherein the Court stated: ""[T]he opposer must prove he has proprietary rights in the term he relies upon to demonstrate likelihood of confusion as to source, whether by ownership of a registration, prior use of a trade name, or whatever other type of use may have developed a trade identity."" Id. at 43."
  • Trade name rights cannot in our law stand on a higher pedestal of protection than that which has been erected for marks.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • "The Board then proceeded to find that "Fluid Energy" was an "apt or common descriptive term" and, thus, opposer failed to establish trade identity rights in "Fluid Energy," and, therefore, failed to establish any legal basis for its claim of damage or demonstrate any likelihood of confusion as to source. Id. at 36. See also Antillian Cigar Corp. v. Benedit Cigar Corp., 218 USPQ 187, 188 (TTAB 1983) wherein the Board stated: ""With the above concession, the question is raised whether the previous use in the United States of an admittedly descriptive trade name provides an opposer with standing to claim damage based on Section 2(d) of the Trademark Act from registration of a confusingly similar mark for identical goods. In our opinion, trade name rights cannot in our law stand on a higher pedestal of protection than that which has been erected for marks. In Otto Roth, at 209 USPQ 45 the Court above mandated that a secondary meaning showing was required in the case of the admittedly descriptive term ‘BRIE NOUVEA' used in the nature of a mark in the circumstances of that case. Accordingly, use of a term as the salient part of a trade name which is primarily geographically descriptive of the products in connection with which it is used cannot endow its user with standing to oppose registration of a mark believed to be confusingly similar thereto, absent a showing that such term has acquired a secondary meaning indicating the source of those goods."""
  • The early cases interpreting the Lanham Act reviewed the differences between the Trade Mark Act of 1905 and the Lanham Act, concluding that while surnames continue to require a showing of secondary meaning under the Lanham Act, personal or full names do not.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • The early cases interpreting the Lanham Act reviewed the differences between the Trade Mark Act of 1905 and the Lanham Act, concluding that while surnames continue to require a showing of secondary meaning under the Lanham Act, personal or full names do not.
  • The requirement that pertains to personal names under the Lanham Act is found in Section 2(c) which requires written consent from living individuals.3 In those cases where the name does not identify a living individual it is USPTO practice to require a statement to that effect. For example, the subject application includes the statement "The name [NAME] does not identify a living individual."
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • The requirement that pertains to personal names under the Lanham Act is found in Section 2(c) which requires written consent from living individuals.3 In those cases where the name does not identify a living individual it is USPTO practice to require a statement to that effect. For example, the subject application includes the statement "The name Cab Calloway does not identify a living individual."
  • The USPTO continues to view personal names as inherently distinctive and registrable on the Principal Register.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • The USPTO continues to view personal names as inherently distinctive and registrable on the Principal Register. See In re J.J. Yeley, 85 USPQ2d 1150 (TTAB 2007) (J. J. Yeley identifies an individual and, therefore, is not primarily merely a surname).
  • While Lyndale Farm and Alfred Electronics have not been overruled, we must read them in conjunction with subsequent case law that clearly requires opposer to have at least a superior" right.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • Thus, while Lyndale Farm and Alfred Electronics have not been overruled, we must read them in conjunction with subsequent case law that clearly requires opposer to have at least a "superior" right. In view of our finding that personal names are inherently distinctive, opposer has established its "superior right" through prior trade name use.
  • When a plaintiff is asserting prior rights based on a personal name, not a surname, the personal name trademark is inherently distinctive.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • To rule otherwise would be in direct conflict with the basic underpinning of trademark law in the United States, which is that rights are obtained through use and not by being the first to file an application. If we applied two different standards it would judicially create a first to file system for personal names. Thus, what cannot be reconciled is the application of different standards to the plaintiff and defendant in these circumstances. Either personal name marks require secondary meaning, in which case we must remand the application for examination under that standard, or they do not, in which case opposer need not show secondary meaning. It is a settled interpretation of the statute, followed by the USPTO for over 50 years, that personal name marks are inherently distinctive under the Lanham Act and we continue to follow that interpretation. We hold that when a plaintiff is asserting prior rights based on a personal name, not a surname, the personal name trademark is inherently distinctive.
  • Proof of a date of use earlier than that asserted in the application must be established by clear and convincing evidence.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • We note, however, even if we were to allow applicant to withdraw that stipulation, the evidence of record is not sufficient to find that there was prior use, not abandoned, which applicant could tack on to its filing date. Proof of a date of use earlier than that asserted in the application must be established by clear and convincing evidence, because of the change of position from one "considered to have been made against interest at the time of filing of the application." Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987).
  • There is no logical basis for holding that a personal name mark which is inherently distinctive for registration purposes must nonetheless be shown to have acquired secondary meaning before it can be relied upon by an opposer in an opposition proceeding.
    • Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009)
      • We see no logical basis for holding that a personal name mark which is inherently distinctive for registration purposes must nonetheless be shown to have acquired secondary meaning before it can be relied upon by an opposer in an opposition proceeding. Thus, we reject applicant's argument regarding opposer's alleged failure to establish secondary meaning in his mark because we consider the mark to be inherently distinctive.
Christopher Brooks v. Creative Arts By Calloway, LLC, Opposition No. 91160266 (TTAB 2009) Grand Total
In re J.J. Yeley, 85 USPQ2d 1150 (TTAB 2007) 1
Peaceable Planet Inc. v. Ty Inc., 363 F.3d 986, 70 USPQ2d 1386 (7th Cir. 2004) 1
American Honda Motor Co., Inc. v. Richard Lundgren, Inc., 314 F.3d 17 (1st Cir. 2002) 1
Hoover Co. v. Royal Appliance Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001) 1
New Hampshire v. Maine, 532 U.S. 742 (2001) 1
West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ 1660 (Fed. Cir. 1994) 1
National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991) 1
Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039 (Fed. Cir. 1990) 1
Hydro-Dynamics Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772 (Fed. Cir. 1987) 1
Antillian Cigar Corp. v. Benedit Cigar Corp., 218 USPQ 187 (TTAB 1983) 1
In re Mancino, 219 USPQ 1047 (TTAB 1983) 1
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981) 1
Fluid Energy Processing & Equipment Co. v. Fluid Energy, Inc., 212 USPQ 28 (TTAB 1981) 1
In re Carson, 197 USPQ 554 (TTAB 1977) 1
In re Lee Trevino Enterprises, Inc., 182 USPQ 253 (TTAB 1974) 1
In re Ames, 160 USPQ 214 (TTAB 1968) 1
Alford Mfg. Co. v. Alfred Electronics, 137 USPQ 250 (TTAB 1963), aff'd, 333 F.2d 912, 142 USPQ 168 (C.C.P.A. 1964) 1
Ex parte Rivera Watch Corp., 106 UPSQ 145 (Comm'r 1955) 1
Ex parte Dallioux, 83 USPQ 262 (Comr. Pats. 1949) 1
Grand Total 19 19
No Statutes Listed