As stated in section 1211 Refusal on Basis of Surname of the Trademark Manual of Examination Procedure:

Extract from 15 U.S.C. §1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ... (e) Consists of a mark which ... (4) is primarily merely a surname.

Under §2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4), a mark that is primarily merely a surname is not registrable on the Principal Register absent a showing of acquired distinctiveness under §2(f), 15 U.S.C. §1052(f). See TMEP §§1212 et seq. regarding acquired distinctiveness. Formerly §2(e)(3) of the Act, this section was designated §2(e)(4) when the NAFTA Implementation Act took effect on January 1, 1994. A mark that is primarily merely a surname may be registrable on the Supplemental Register in an application under §1 or §44 of the Trademark Act.

The Trademark Act, in §2(e)(4), reflects the common law that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes its significance to the public from that of a surname to that of a mark for particular goods or services. The common law also recognizes that surnames are shared by more than one individual, each of whom may have an interest in using his surname in business; and, by the requirement for evidence of distinctiveness, the law, in effect, delays appropriation of exclusive rights in the name. In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985).

The question of whether a mark is primarily merely a surname depends on the mark's primary significance to the purchasing public. See, e.g., Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm'r Pats. 1955). Each case must be decided on its own facts, based upon the evidence in the record. As stated in section 1211.01 Primarily Merely a Surnameof the Trademark Manual of Examination Procedure:

The question of whether a term is primarily merely a surname depends on the primary, not the secondary, significance to the purchasing public. The Trademark Trial and Appeal Board has identified five factors to be considered in making this determination:

  1. (1) whether the surname is rare (see TMEP §1211.01(a)(v));
  2. (2) whether the term is the surname of anyone connected with the applicant;
  3. (3) whether the term has any recognized meaning other than as a surname (see TMEP §§1211.01(a) et seq.);
  4. (4) whether it has the "look and feel" of a surname (see TMEP §1211.01(a)(vi)); and
  5. (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression (see TMEP §1211.01(b)(ii).
In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995).

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

  • Section 2(e)(4) of Trademark Act precludes registration of a mark which is "primarily merely a surname" on the Principal Register without a showing of acquired distinctiveness under §2(f).
    • In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007)
      • Section 2(e)(4) of Trademark Act precludes registration of a mark which is "primarily merely a surname" on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Act, 15 U.S.C. §1052(f).
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • Section 2(e)(4) of the Trademark Act prohibits the registration on the Principal Register of a mark that "is primarily merely a surname."
  • Definition: Primarily merely a surname.
    • In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002).
      • A term is primarily merely a surname if its primary significance to the purchasing public is that of a surname. In re Hutchinson Technology, Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988).
  • "Merely" is synonymous with "only," and "primarily" refers to "first in order" or "fundamentally."
    • In re J. J. Yeley, Serial No. 78489186, (TTAB 2007)
      • The statute provides that registration should be refused if the proposed mark is "primarily merely a surname." "Merely" is synonymous with "only," and "primarily" refers to "first in order" or "fundamentally."
  • Each case must be decided on a case by case basis and the facts made of record whether the mark at issue is primarily merely a surname.
    • In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007)
      • We must decide on the facts of each case whether the mark at issue is "primarily merely a surname" under the Act. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985).
    • In re J. J. Yeley, Serial No. 78489186, (TTAB 2007)
      • The determination of whether the primary significance of the designation at issue is that of a surname is based on the facts made of record. In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985).
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • Whether a term sought to be registered is primarily merely a surname within the meaning of Section 2(e)(4) of the Trademark Act must necessarily be resolved on a case by case basis, taking into account a number of factual considerations. In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994). Cf. In re First Draft, Inc., 76 USPQ2d 1183 (TTAB 2005) (Board determined registrability of author's pseudonym as a mark for a series of books on evidence of record, notwithstanding the applicant's submission of files from other registrations purportedly establishing an Office practice of registering such names).
  • Elements as to whether a term is primarily merely a surname.
    • In re Piano Factory Group Inc., Serial No. 78157550, (TTAB 2007)
      • Moreover, as set forth by the Board in In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000):

        "Among the factors to be considered in determining whether a term is primarily merely a surname are the following: (i) whether the surname is rare; (ii) whether anyone connected with applicant has the involved term as a surname; (iii) whether the term has any other recognized meaning; and (iv) whether the term has the "look and feel" of a surname. See In re Benthin Management GmbH, 37 USPQ2d 1332[, 1333] (TTAB 1995).3"

        FOOTNOTE 3: A fifth factor, which concerns whether a mark is in a stylized form distinctive enough to create a separate non-surname impression, is not present herein inasmuch as applicant seeks to register its mark in standard character form. See In re Benthin Management GmbH, supra at 1333-34.

    • In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007)
      • In Benthin, the Board identified five factors, four of which are relevant here, to consider in determining whether a mark is primarily merely a surname: (1) the degree of the surname's "rareness"; (2) whether anyone connected with applicant has the mark as a surname; (3) whether the mark has any recognized meaning other than as a surname; and (4) whether the mark has the "look and feel" of a surname. Id. at 1332-33.
    • In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007)
      • Because BAIK is in standard character form, we need not consider the fifth Benthin factor here, that is, whether the manner in which the mark is displayed might negate any surname significance.
    • In re J. J. Yeley, Serial No. 78489186, (TTAB 2007)
      • In Benthin, the Board identified five factors, four of which are relevant here, to consider in determining whether a mark is primarily merely a surname: 1. The degree of the surname's "rareness";
        2. Whether anyone connected with the applicant has the involved term as a surname;
        3. Whether the mark has any recognized meaning other than as a surname; and,
        4. Whether the mark has the "look and sound" of a surname. Id.
        Because J. J. YELEY is in standard character form, we need not consider the fifth Benthin factor here, that is, whether the manner in which the mark is displayed might negate any surname significance.
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • The case law sets out a number of factors to be used to determine if the term is primarily merely a surname. "Among the factors to be considered … are the following: (i) whether the surname is rare; (ii) whether anyone connected with applicant has the involved term as a surname; (iii) whether the term has any other recognized meaning; and (iv) whether the term has the ‘look and feel' of a surname." In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000).2 FOOTNOTE 2 "Another factor, not applicable here, concerns the stylization of the mark, which, if it is "distinctive enough, this would cause the mark not to be perceived as primarily merely a surname." See In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995)."
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • "Among the factors to be considered in determining whether a term is primarily merely a surname are the following: (i) whether the surname is rare; (ii) whether anyone connected with applicant has the involved term as a surname; (iii) whether the term has any other recognized meaning; and (iv) whether the term has the ‘look and feel' of a surname." In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000).4 FOOTNOTE 4 "If the mark is depicted in stylized form, we would also consider the stylization because if it is "distinctive enough, this would cause the mark not to be perceived as primarily merely a surname." See In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995). Inasmuch as applicant's mark is displayed in a typed or standard character drawing, this factor is not relevant."
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • We normally look to four factors in a surname analysis: (i) whether the surname is rare; (ii) whether anyone connected with applicant has the involved term as a surname; (iii) whether the term has any other recognized meaning; and (iv) whether the term has the "look and feel" of a surname. See In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000), citing In re Benthin Management Gmbh, 37 USPQ2d 1332 (TTAB 1995).
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • There are five accepted factors to be considered in the analysis: (1) Is the word a common or rarely used surname" (2) Does anyone connected with the applicant have that surname" (3) Does the word have meaning other than as a surname" (4) Does the word look and sound like a surname" (5) Is the word presented in use in a stylized form distinctive enough to create a separate non-surname impression" In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) (Examining attorney's refusal to register BENTHIN reversed, because it was a rare surname, did not look and sound like a surname, and was set forth in a highly stylized oval design).
  • If the primary impact or impression of a word when applied to a product is that it is a surname, to the purchasing public, then the mark is primarily merely a surname.
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • When we are faced with a Section 2(e)(4) refusal, we consider the impact a term has or would have on the purchasing public because "it is that impact or impression which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname." In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975), quoting, Ex parte Rivera Watch Corp., 106 USPQ 145 (Comm'r 1955).
    • In re J. J. Yeley, Serial No. 78489186, (TTAB 2007)
      • Thus, we must determine whether J. J. YELEY is fundamentally only a surname. In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265, 267 (CCPA 1953). We must consider the mark as a whole and determine whether the addition of the initials "J. J." to "Yeley" results in a mark that is primarily merely a surname. It "is that impact or impression [how the mark is used] which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname." In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975), quoting, Ex parte Rivera Watch Corp., 106 UPSQ 145, 149 (Comm'r 1955). In other words, we must determine the primary significance of J. J. YELEY to the purchasing public. Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000).
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • In addition, consideration must be given to the impact a term has or would have on the purchasing public because "it is that impact or impression which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname." In re Harris- Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975), quoting, Ex parte Rivera Watch Corp., 106 USPQ 145 (Comm'r 1955) (emphasis in original).
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • In surname cases, we must determine the impact the term has or would have on the purchasing public because "it is that impact or impression which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname." In re Harris- Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975), quoting, Ex parte Rivera Watch Corp., 106 USPQ 145 (Comm'r 1955) (emphasis in original).
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • The test to be applied in determining whether a mark is primarily merely a surname is its primary significance to the purchasing public. See, e.g., In re Champion International Corp., 229 USPQ 550 (TTAB 1985).
  • It is the surname's significance in the United States which is determinative of the registrability issue.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • The term "Fiore" is translated as "flower; blossom, bloom" and the English word "flower" is translated into Italian simply as "Fiore." Cassell's Italian Dictionary (1977).7 We agree with the examining attorney's initial point that we are concerned with the meaning of the mark in the United States. In re Wickuler-Kupper-Brauerei KGaA, 221 USPQ 469, 470 n.2 (TTAB 1983) ("It is the surname significance in the United States which is determinative of the registrability issue").

        FOOTNOTE 7 "We take judicial notice of these translations. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)."

  • The fact that a term is a word in a foreign language does not mean that this meaning would be unknown in the United States.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • However, the fact that a term is a word in the Italian language does not mean that this meaning would be unknown in the United States. Indeed, the board has previously observed that "it does not require any authority to conclude that Italian is a common, major language in the world and is spoken by many people in the United States." In re Ithaca Industries, Inc., 230 USPQ 702, 704-05 (TTAB 1986). See also E. Martinoni, 189 USPQ at 590 ("[W]e take judicial notice that there are many people in the United States who speak and read Italian").
  • Normally, in trademark cases, we consider the translation of a foreign term in determining whether a mark is registrable.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • The question now is whether we can consider the meaning a surname has in a foreign language in our surname analysis. Normally, in trademark cases, we consider the translation of a foreign term in determining whether a mark is registrable. In descriptiveness cases: "It is a well established principle of trademark law in this country that the foreign equivalent of a merely descriptive English word is no more registrable than the English word itself despite the fact that the foreign term may not be commonly known to the general public. That is, normally no distinction can be made between English terms and their foreign equivalents with respect to registrability." In re Optica International, 196 USPQ 775, 777 (TTAB 1977). The same rule applies in genericness cases. Weiss Noodle Co. v. Golden Cracknet and Specialty Co., 290 F.2d 845, 129 USPQ 411, 413 (CCPA 1961) ("In the instant case registration of the Hungarian name for noodles, ‘haluska' or its phonetic equivalent in English, whether or not hyphenated, would be contrary to law for no one can be granted the exclusive use of the name of an article, either in our native tongue or its equivalent in any foreign language").
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • Furthermore, in likelihood of confusion cases, the doctrine of foreign equivalents is applied to determine if the marks are similar in meaning or connotation. Ithaca Industries, 230 USPQ at 704.
  • Determining whether a term is primarily merely a surname must take into consideration the meaning the term has in a foreign language.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • Similarly, we hold that whether a term is primarily merely a surname must take into consideration the meaning the term has in a foreign language.
  • If the term has an established meaning, we consider the meaning's significance in the United States.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • If the term has an established meaning, as in this case, we consider the meaning's significance in the United States.
  • Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule and should be viewed merely as a guideline
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • We note that there are limitations to the application of the doctrine of foreign equivalents. "Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule and should be viewed merely as a guideline. The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the word into its English equivalent." Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005) (Citations and internal quotation marks omitted). The rule is not to be applied mechanically.
  • Terms with English language meanings may still be held to be primarily merely surnames if there is a readily recognized meaning of the term apart from its surname significance. This does not mean that all that is necessary to overcome a prima facie showing of surname significance is that the applicant uncover a dictionary entry for the term in question.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • Even terms with English language meanings may still be held to be primarily merely surnames. "[I]f there is a readily recognized meaning of the term apart from its surname significance, registration should be granted. This does not mean, however, that all that is necessary to overcome a prima facie showing of surname significance is that the applicant uncover a dictionary entry for the term in question." In re Nelson Souto Major Piquet, 5 USPQ2d 1367, 1367-68 (TTAB 1987).
  • If the term's dictionary definition is not obscure, it may be a significant factor in determining that the term is not primarily merely a surname.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • However, if the term's dictionary definition is not obscure, it may be a significant factor in determining that the term is not primarily merely a surname. See, e.g., United Distillers, 56 USPQ2d at 1221 (Dictionary definition of "Hackler" as "one that hackles; esp.: a worker who hackles hemp, flax or broomcorn" considered in determining that HACKLER was not primarily merely a surname); Fisher Radio Corp. v. Bird Electronic Corp., 162 USPQ 265, 267 (TTAB 1969) (BIRD not primarily merely a surname).
  • When a term looks and sounds like a surname, such a finding merely tends to reinforce a conclusion that the term's primary significance is as a surname.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • On the other hand, when it does look and sound like a surname, such a finding merely tends to reinforce a conclusion that the term's primary significance is as a surname.
  • When a term does not have the look and sound of a surname, it clearly aids the applicant.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • When a term does not have the look and sound of a surname, it clearly aids the applicant.
  • A rare surname does not entitle the term to treatment different from what would be accorded to a common surname when no other meaning for the word is shown
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • We add that, even if the surname "Fiore" was rare, that fact, by itself, does not indicate that the mark is not a surname within the meaning of the Trademark Act. In re E. Martinoni Co., 189 USPQ 589, 590 (TTAB 1975) ("The fact that ‘MARTINONI' may be a rare surname does not entitle it to treatment different from what would be accorded to a common surname when no other meaning for the word is shown").
  • A name need not have a typical surname prefix or suffix to have the look and feel of a surname.
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • This argument is not persuasive because a name need not have a "typical surname prefix … or suffix" to have the look and feel of a surname; and because "Watson" ends with "son," which the examining attorney has established is a typical surname suffix appearing in several names within the one hundred most common surnames in the United States.
  • Cases involving rare surnames require a carefully weighing of the "look and feel" element of the analysis.
    • In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007)
      • In addition, in a case such as this involving a very rare surname, we cannot assume that the purchasing public will view the mark as a surname based on exposure to the surname use. See In re Garan Inc., supra at 1540. It is in the case of a rare surname that we need to weigh "look and feel" carefully. For example, certain surnames, though rare, resemble common surnames "in their structure and pronunciation." See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988). However, we see no evidence that such is the case with BAIK. Cf. In re United Distillers plc, supra at 1221. In this case, there is no evidence that relevant purchasers would perceive BAIK as a surname.
  • There is no per se rule that the addition of an initial(s) to a surname means that the mark is automatically primarily merely a surname. It depends on the principal or ordinary significance of the term, and that is a question of fact.
    • In re J. J. Yeley, Serial No. 78489186, (TTAB 2007)
      • However, there is no per se rule that the addition of an initial(s) to a surname means that the mark is automatically primarily merely a surname. It depends on the principal or ordinary significance of the term, and that is a question of fact.

        "The question of whether or not a term is primarily merely a surname within the meaning of Section 2(e)(3) [now Section 2(e)(4)] depends on what is perceived by purchasers to be its primary significance. [Internal citation omitted]. To be more specific, if the principal or ordinary significance of the term is that of a surname, it is prohibited from registration. On the other hand, if there is a readily recognized meaning of the term apart from trademark significance, registration should be granted." In re Piquet, 5 USPQ2d 1367 (TTAB 1987). See also, In re Etablissements Darty et Fils, 225 USPQ at 653 ("with respect to issues of fact, no precedential value can be given to the quantum of evidence apparently accepted in a prior case"); In re Taverniti, SARL, 225 USPQ 1263, 1264 (TTAB 1985) ("we must decide the issue presented herein by considering all of the relevant facts and circumstances peculiar to this case"); TMEP §1211 ("Each case must be decided on its own facts, based upon the evidence in the record").

  • If the surname is unduly emphasized or otherwise constitutes the only significant part of the mark, the addition of initials will not change the character of the mark as being primarily merely a surname.
    • In re J. J. Yeley, Serial No. 78489186, (TTAB 2007)
      • In reaching this decision we are mindful of the decision of the predecessor to our primary reviewing court that the use of a first name initial followed by a surname reinforces, rather than diminishes, the surname significance of a term. In re I. Lewis Cigar Mfg. Co., supra (S. SEIDENBERG & CO.'S is primarily merely a surname). See also, In re Sears, Roebuck & Co., 87 USPQ 400 (Comr. Pats. 1950), aff'd, 204 F.2d 32, 96 USPQ 360 (CA DC 1953) (J.C. HIGGINS is primarily merely a surname). These decisions are based on the premise that if the surname is unduly emphasized or otherwise constitutes the only significant part of the mark, the addition of initials will not change the character of the mark as being primarily merely a surname. In re Sears, Roebuck & Co., 96 UPSQ at 362. See also Ex parte Dallioux, 83 USPQ 262, 263 (Comr. Pats. 1949) (ANDRE DALLIOUX would not be registrable if the surname were unduly emphasized or otherwise constituted the only significant part of the mark). 12

        FOOTNOTE 12: The Commissioner specifically noted that the prohibition against registering the name of an individual is no longer the law. 96 USPQ at 263.

  • The fact that applicants have added another term to a surname does not automatically detract from the surname significance of the term. (e.g., initials, co., & sons, MD, etc.)
    • In re Piano Factory Group Inc., Serial No. 78157550, (TTAB 2007)
      • We concur with the Examining Attorney that, considered as a whole, the mark "VOSE & SONS" is primarily merely a surname. As the predecessor to our primary reviewing court stated in the analogous case of In re I. Lewis Cigar Mfg. Co., supra at 98 USPQ 267, involving an application to register the mark "S. SEIDENBERG & CO'S." for cigars (emphasis added): It seems to us that "Seidenberg" is clearly a surname which can have no other meaning or significance than that of a surname. Nor do we believe that the addition of the single initial is sufficient to it from that category. Further, the addition of the expression "& Co's.," whether it the abbreviated and possessive form present here, or in the usual form, cannot be held distinguish or relate to anything except surname "Seidenberg." It is our conclusion, therefore, that the action of the Patent Office in holding that the involved mark was not more than primarily merely a surname, within the meaning of Section 2(e), was correct.
    • In re Piano Factory Group Inc., Serial No. 78157550, (TTAB 2007)
      • Likewise, in this case, the addition of the notation "& SONS" to the surname "VOSE" cannot be said to distinguish or relate to anything other than the surname which precedes such notation since "& SONS" serves only to emphasize or reinforce that "VOSE" is the surname of the sons' parents. See In re Etablissements Darty et Fils, supra [fact that "Darty et Fils, as used on the specimens, translates as "Darty and Son" "in itself, is highly persuasive that the public would perceive DARTY as a surname"].
  • Thus, as stated by the Board in In re Giger, supra at 1409, in affirming the refusal to register the mark "GIGER MD" for various items of medical apparatus, exercise machines and gymnastic apparatus on the ground of such mark being primarily merely a surname (emphasis added):
    • In re Piano Factory Group Inc., Serial No. 78157550, (TTAB 2007)
      • "Obviously, when a surname is combined with the term MD, the perception of the term would emphasize that the named person is a doctor. The fact that applicants have added another term to a surname does not automatically detract from the surname significance of the term. This is particularly true in the case of titles and other indicia that simply reinforce the surname meaning of the term. See In re Rath, 402 F.3d 1207, 74 USPQ2d 1174 (Fed. Cir. 2005) (Federal Circuit affirmed board decision holding that DR. RATH was primarily merely a surname); In re I. Lewis Cigar Mfg. Co., ... [supra] ("S. SEIDENBERG & CO.'S" [sic] held primarily merely a surname)"
    • In re J. J. Yeley, Serial No. 78489186, (TTAB 2007)
      • It is common knowledge that stock car racing has become one of the most popular spectator sports in the United States and that as such, many of its participating drivers have become well-known personalities to fans. Thus, based on applicant's declaration, we are convinced that the primary significance of J. J. YELEY is the race car driver, and this primary significance outweighs the surname significance. In other words, applicant's initials, "J. J." do not reinforce the surname "Yeley"; rather, the mark in its entirety conveys the impression that it is a personal name. See Michael S. Sachs Inc. v. Cordon Art B.V., supra.
    • In re J. J. Yeley, Serial No. 78489186, (TTAB 2007)
      • This is a decidedly subjective factor based on whether prospective consumers would perceive J. J. YELEY to be a personal name or a surname. A surname is a "family name" as opposed to a given name. The fact that the designation at issue is a combination of applicant's initials and surname (which he claims constitute his personal name) tends to show that consumers would perceive J. J. YELEY as indicating a personal name, not primarily merely a surname. See Michael S. Sachs Inc. v. Cordon Art B.V., supra.
  • A surname that would not be evocative of a particular historical individual but, rather, would be more evocative of numerous individuals, does not qualify for registration as a historical name and is merely a surname of numerous individuals with varying degrees of historical significance.
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • The "historical figure" cases discuss whether a particular surname is primarily associated with, and evocative of, a particular historical figure. A surname that would not be evocative of a particular historical individual but, rather, would be more evocative of numerous individuals, does not qualify for registration as a historical name and is merely a surname of numerous individuals with varying degrees of historical significance.
  • The fact that a term is shown to have some minor significance as a geographical term will not dissipate its primary significance as a surname.
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • Further, as the examining attorney has noted, the fact that a term is shown to have some minor significance as a geographical term will not dissipate its primary significance as a surname. See In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993).
  • Minor geographic occurrences (streets, villas, towns) do not demonstrate that a term is not primarily a surname.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • It would hardly be surprising that a surname also identified streets, villas, or towns and such minor geographic occurrences do not demonstrate that the term is not primarily a surname. To be considered primarily merely a surname, a term does not have to be devoid of any nonsurname significance. Harris-Intertype, 186 USPQ at 239 (evidence that "Harris" was the name of cities in Arizona, Kansas, Minnesota, Missouri, and Oklahoma and counties in Georgia and Texas did not prevent the term from being considered primarily merely a surname); Gregory, 70 USPQ2d at 1796 ("Moreover, there is nothing in the record to show that any of these places are so well known that the geographic significance … would overshadow the surname significance of the term").
  • Places are often named after individuals.
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • We point out too that it is common knowledge that places are often named after individuals. See In re Champion International Corp., 229 USPQ 550 (TTAB 1985).
  • Even in cases concerning historical names the ultimate issue to be determined was still that of the primary significance of the mark in question to the purchasing public.
    • In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002).
      • But even when such a line was drawn, the ultimate issue to be determined was still that of the primary significance of the mark in question to the purchasing public. See In re Champion International Corp., supra.
  • The semi-historical/historical distinction is simply one means of determining the degree of significance of the name to the public as that of a famous person.
    • In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002).
      • The semi-historical/historical distinction is simply one means of determining the degree of significance of the name to the public as that of a famous person.
  • Another issue to be considered, in assessing how rarely is a name used, is the media attention or publicity accorded public personalities with the name.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • Another issue to be considered, in assessing how rarely is a name used, is the media attention or publicity accorded public personalities with the name.
  • A surname rarely appearing in birth records may nonetheless appear more routinely in news reports, articles and the like, so as to be broadly exposed to the general public.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • A surname rarely appearing in birth records may nonetheless appear more routinely in news reports, articles and the like, so as to be broadly exposed to the general public.
  • Where an individual applicant, or an officer or employee, for example, of a corporate applicant, actually has the surname proposed as a mark, this would certainly weigh against the applicant.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • In a situation wherein an individual applicant, or an officer or employee, for example, of a corporate applicant, actually has the surname proposed as a mark, this would certainly weigh against the applicant. Benthin, 37 USPQ2d at 1333 (even though Benthin was ultimately found not primarily merely a surname, the second factor weighed against the applicant because Benthin was the surname of applicant's Managing Director).
  • Conditions of actual use are typically of little relevance in ex parte matters concerning the application of a single mark.
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • Applicant has also argued that it "does not use the WATSON mark in a way that highlights it[s] surname significance" but that it "consistently uses its mark, WATSON, in a way that detracts from the surname significance of the mark." Specifically, applicant argues that it "markets its WATSON software with a suite of software titles [GALILEO, COPERNICUS, KELVIN, NEWTON and DARWIN], all geared toward use in a particular laboratory setting and named after scientists who are well-known for their contribution to those fields." Brief at p. 16. Applicant's argument is not persuasive for several reasons. First, with the exception of "Galileo," each of the names applicant identifies in the "suite of software titles" is the surname of a well-known scientist. Second, applicant's evidence in support of its argument only shows use of "Newton," "Watson" and "Galileo" – applicant's argument in identifying other names goes beyond its evidence of actual use. Third, applicant's argument is of little relevance because applicant is applying for registration of the term WATSON alone and conditions of actual use are typically of little relevance in ex parte matters.
  • Burden of Proof: Burdens of proof in a surname matter.
    • In re Piano Factory Group Inc., Serial No. 78157550, (TTAB 2007)
      • As an appropriate starting point for analysis, we observe that as stated by the Board in In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939, 1940 (TTAB 1993):

        "At the outset, it is well settled that whether a mark is primarily merely a surname depends upon whether its primary significance to the purchasing public is that of a surname. The burden is upon the Examining Attorney, in the first instance, to present evidence sufficient to make out a prima facie showing in support of the contention that a particular mark is primarily merely a surname. Provided that the Examining Attorney establishes a prima facie case, the burden shifts to the applicant to rebut the showing made by the Examining Attorney. See In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239-40 (CCPA 1975) and In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421, 422 (CCPA 1975). Whether a term sought to be registered is primarily merely a surname within the meaning of ... the Trademark Act must necessarily be resolved on a case by case basis and, as is the situation with any question of fact, no precedential value can be given to the amount of evidence apparently accepted in a prior proceeding. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 Fed. Cir. 1985). ...."

  • Burden of Proof: The examining attorney bears the initial burden to make a prima facie showing of surname significance.
    • In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007)
      • The examining attorney bears the initial burden to make a prima facie showing of surname significance. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985).
    • In re J. J. Yeley, Serial No. 78489186, (TTAB 2007)
      • The Examining Attorney has the initial burden to make a prima facie showing of surname significance. Id. If the Examining Attorney makes that showing, then we must weigh all of the evidence from the examining attorney and the applicant to determine ultimately whether the mark is primarily merely a surname. In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994). If there is any doubt, we must resolve the doubt in favor of applicant. In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995).
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • The USPTO has the burden of establishing 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, 653 (Fed. Cir. 1985). Moreover, "[t]he question of whether a word sought to be registered is primarily merely a surname within the meaning of the statute can only be resolved on a case by case basis," taking into account a number of various factual considerations. Id.
    • In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002).
      • The initial burden is on the Patent and Trademark Office to establish a prima facie case that the term is primarily merely a surname. In re Establissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985).
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • The examining attorney has the initial burden of presenting evidence to show prima facie that a mark is primarily merely a surname. In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988); In re Raivico, 9 USPQ2d 2006 (TTAB 1988).
  • Burden of Proof: After the establishment of a prima facie case, the burden shifts to applicant to rebut the showing made by the Examining Attorney.
    • In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002).
      • If the Examining Attorney establishes a prima facie case, the burden shifts to applicant to rebut the showing made by the Examining Attorney. See In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993).
  • If the examining attorney makes a prima facie showing, then the TTAB must weigh all of the evidence from the examining attorney and the applicant to determine ultimately whether the mark is primarily merely a surname.
    • In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007)
      • If the examining attorney makes that showing, then we must weigh all of the evidence from the examining attorney and the applicant, to determine ultimately whether the mark is primarily merely a surname. See In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994).
  • Any doubt must be resolved in the favor of applicant.
    • In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007)
      • If there is any doubt, we must resolve the doubt in favor of applicant. See In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995).
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • Our case law holds that if we have doubts about whether the term is a surname, we resolve them in favor of the applicant and for publication of the mark. United Distillers, 56 USPQ2d at 1222; In re S. Oliver Bernd Freier GmbH & Co., 20 USPQ2d 1878, 1879 (TTAB 1991).
  • Evidence: A mark may be considered an extremely rare surname based on a few examples of the name located from a comprehensive directory of the entire United States.
    • In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007)
      • As a result, on this record, we conclude that Baik is an extremely rare surname. In concluding so, we rely on the fact that only 456 examples of the Baik surname were located from a comprehensive directory of the entire United States. See In re Sava Research Corp., supra at 1381; and In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987).
    • In re J. J. Yeley, Serial No. 78489186, (TTAB 2007)
      • As a result, on this record, we conclude that Yeley is a rare surname. In reaching this conclusion, we rely on the fact that only 147 examples of the Yeley surname were located from a directory purportedly of the entire United States. See In re Sava Research Corp., supra; In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987).
  • Evidence: Evidence, or the lack thereof, of the notoriety of a surname goes towards a determination of whether the public would consider the mark at issue a surname.
    • In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007)
      • Further, we note the absence of evidence that any person with the Baik surname has achieved any notoriety. Cf. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004) (evidence of public figures with surname Rogan found supported conclusion that public would perceive Rogan as a surname).
  • Evidence: Evidence of extensive use of a surname can be used to indicate a mark is not a rare surname.
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • In regard to the first factor, i.e., whether the surname is rare, we note that the examining attorney's evidence shows over 81,000 residential listings and over 250,000 persons with the surname "Watson"; that "Watson" is the 72nd most common surname in the United States; and that "Watson" is the surname of several people who have made significant accomplishments in their professional lives. We hence find that the examining attorney has shown that "Watson" is not a rare surname.
  • Evidence: The fact, however, that a proposed mark is not applicant's surname, or the surname of an officer or employee, does not tend to establish one way or the other whether the proposed mark would be perceived as a surname.
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • Turning to the second factor, we consider whether anyone associated with applicant has the surname "Watson." Applicant has indicated in its response to the first Office action that no person associated with applicant has "Watson" as a surname. The fact, however, that "a proposed mark is not applicant's surname, or the surname of an officer or employee, does not tend to establish one way or the other whether the proposed mark would be perceived as a surname." In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • The second surname factor is whether anyone associated with applicant is named "Fiore." Applicant has maintained throughout the prosecution that there "is no person associated with the applicant who has the surname FIORE." Response to first Office action at 12. However, the fact that "a proposed mark is not the applicant's surname, or the surname of an officer or employee, does not tend to establish one way or the other whether the proposed mark would be perceived as a surname." In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • In contrast, that a proposed mark is not the applicant's surname, or the surname of an officer or employee, does not tend to establish one way or the other whether the proposed mark would be perceived as a surname.
  • Evidence: The TTAB also considers any evidence which is submitted to indicate that the subject term has another recognized meaning.
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • Third, we consider whether there is any evidence to indicate that "Watson" has another recognized meaning. In this case, the examining attorney has not submitted any evidence of another recognized meaning for "Watson." (However, as discussed later in this decision, applicant maintains "Watson" has significance other than as a mere surname.)
  • Evidence: Evidence and analysis concerning the "look and feel" of a surname.
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • Fourth, we consider whether the term has the "look and feel" of a surname. The examining attorney's evidence supports her argument that "Watson" has the "look and feel" of a surname. She has shown that there are numerous individuals with that surname; and that some of such persons are notable in view of their professional accomplishments. The resulting public attention contributes to public perception of "Watson" as a surname. Gregory, 70 USPQ2d at 1796. In addition, we note that the term would not be perceived as an acronym, initialism or a coined term, but instead, as "a cohesive term with no meaning other than as a surname." Id. Further, the examining attorney's evidence from about.com shows that like "Watson," many surnames end with "son," including the name identified as the second most common surname in the United States, i.e., Johnson. See also Anderson, Jackson, Thompson, Robinson, Nelson, Richardson, Peterson, Henderson and Patterson, which, like "Watson," are within the one hundred most common surnames in the United States.
  • Evidence: The TTAB will consider evidence of record regarding significant recognition by the purchasing public of an association between applicant's mark and geographic locations.
    • In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007).
      • Also, there is no persuasive evidence in the record that would indicate any significant recognition by the purchasing public of an association between applicant's mark and any of these geographic locations named "Watson" or with "Watson" as part of a place name.
  • Evidence: Evidence of extensive listings and articles showing use of the mark as a surname in the U.S. is ample evidence to establish a prima facie case that a mark is primarily merely a surname.
    • In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002).
      • We find that the Examining Attorney has met the initial burden of establishing that the term SOUSA is primarily merely a surname. The total of 4,528 Phonedisc listings and 20,250 Nexis articles showing current use of the surname "Sousa" in the United States is ample evidence to establish a prima facie case in support of his contention that SOUSA is primarily merely a surname. The burden has thus shifted to applicant to rebut this showing.
  • Evidence: We do not view the United Distillers decision as setting a per se benchmark stating that unless there are many more than 1300 listings in a database of telephone listings a surname must be found to be a rare.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • We do not view the United Distillers decision as setting a per se benchmark stating that unless there are many more than 1300 listings in a database of telephone listings a surname must be found to be a rare. First, we note that the decision is somewhat equivocal on the rareness factor, for it initially states that HACKLER "is a rare surname" but later refers to "this relatively rare surname" (emphasis added). More importantly, the decision does not rely solely on the database figures to reach a conclusion on the rareness factor. The United Distillers decision also relied on the absence of any significant number of listings for the HACKLER surname from telephone directories for certain major metropolitan areas (the borough of Manhattan in New York City and the Washington, DC/Northern Virginia areas). United Distillers, 56 USPQ2d at 1221.
  • Evidence: The question whether a surname is or is not rare is not to be determined solely by comparing the number of listings of the name to the total number of listings in a vast computerized database.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • We conclude that the question whether a surname is or is not rare is not to be determined solely by comparing the number of listings of the name to the total number of listings in a vast computerized database.
  • Evidence: While there is no set number of entries to demonstrate that a surname is rare, given the large number of different surnames in the United States, even the most common surnames would represent but small fractions of such a database.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • Given the large number of different surnames in the United States, even the most common surnames would represent but small fractions of such a database.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • Viewing this evidence, we agree with the examining attorney's conclusion that FIORE is not a rare surname. While there is no "magic" number of entries that an examining attorney must present to demonstrate that a surname is not rare, we must keep in mind that given "the large number of different surnames in the United States, even the most common surnames would represent but small fractions of such a database." In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).
  • Evidence: Applicant has not put anything in the record to show how commonly "Rogan" is used as a first name rather than a surname, while we have a good deal of evidence of its use as a surname.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • Applicant has not put anything in the record to show how commonly ROGAN is used as a first name rather than a surname, while we have a good deal of evidence of its use as a surname. Cf. In Re Harris-Intertype Corporation, 518 F.2d 629, 186 USPQ 238, 240 (CCPA 1975) (dictionary listing of HARRIS as given name noted that it is derived from a surname).
  • Evidence: The submission of an atlas query showing use of a name on a few geographic locations (outside the U.S.) is not evidence of whether consumers in the United States will perceive a term as having a non-surname meaning.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • As to the results of the atlas query, we agree with the examining attorney that the apparent existence of a place named "Rogan" in the Ukraine and "Rogans Hill" in Australia is not evidence of whether consumers in the United States will perceive ROGAN as having a non-surname meaning. In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994).
  • Evidence: The submission of evidence of geographical use of a name within the United States may be evidence that consumers in those locations perceive a term as having a surname connotation.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • On the other hand, while the existence of places named "Rogana" and "Roganville" in, respectively, Tennessee and Texas, can be considered as evidence because these uses are in the United States, the existence of Roganville may actually support the conclusion that "Rogan" would be viewed as a surname by individuals in that place (or familiar with it). Harris-Intertype, 186 USPQ at 239 (CCPA 1975) (cities, counties, streets, lakes and other things may derive their names from an individual's name).
  • Evidence: English language dictionaries entries may be submitted to address whether there is another recognized meaning of the term.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • The third factor we address is whether there is another recognized meaning of the term FIORE. The examining attorney has submitted excerpts from ten English language dictionaries showing that the word "Fiore" has no identified meaning in these dictionaries.
  • Evidence: The element of self-authentication which is essential to qualification under Rule 2.122(e) cannot be presumed to be capable of being satisfied by Internet printouts.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • More significant in this instance, however, is applicant's contention that this printout retrieved from the Internet does not qualify as a printed publication under Trademark Rule 2.122(e). The Board has stated that "[t]he element of self-authentication which is essential to qualification under Rule 2.122(e) cannot be presumed to be capable of being satisfied by Internet printouts." Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998).
  • Case Finding: Applying the doctrine of foreign equivalents in this case, we find that "Fiore" is an Italian word that is listed as the only translation of the common English word "flower." It is the type of term that potential customers would stop and translate.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • Applying the doctrine of foreign equivalents in this case, we find that "Fiore" is an Italian word that is listed as the only translation of the common English word "flower." It is the type of term that potential customers would stop and translate. Italian, as a major, modern language, is not an obscure language such as Old English. In re Winegard Co., 162 USPQ 261, 262-63 (TTAB 1969) ("Applicant indicates that ‘WINEGARD' is the equivalent of ‘Winegeard,' an Old English term meaning a vineyard. We are of the opinion that few of the prospective purchasers of applicant's goods would be aware that ‘WINEGARD' is the equivalent of ‘Winegeard,' if that be so").
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • Also, the term "Fiore" is spelled in the standard Italian dictionary form. Thus, there is no question of whether the term would be recognized in its current form as the Italian word for "flower." Picone, 221 USPQ at 95 (Italian word "Piccone" did not establish that "Picone" was not a surname); In re Pickett Hotel Co., 229 USPQ 760, 761 (TTAB 1986) ("‘Pickett' and ‘picket' are not interchangeable in appearance or meaning"). Furthermore, this is not a case where the surname's non-surname meaning in Italian is obscure. In re Advanced Spine Fixation Systems, Inc., 25 USPQ2d 1367, 1369 (TTAB 1992) ("Many surnames of foreign origin have obscure meanings which lose out to the primary surname significance").
  • Case Finding: It has long been held that if the mark has well known meanings as a word in the language and the purchasing public, upon seeing it on the goods, may not attribute surname significance to it, it is not primarily a surname.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • In surname cases, it has long been held that if "the mark has well known meanings as a word in the language and the purchasing public, upon seeing it on the goods, may not attribute surname significance to it, it is not primarily a surname. ‘King,' Cotton,' and ‘Boatman' fall in this category." Rivera Watch Corp., 106 USPQ at 149. See also Ex parte Gemex Co., 111 USPQ 443, 443 (Comm'r Pat. 1956) ("‘WELLINGTON' is a surname; it is a geographical name, being the national capital of New Zealand and the name of a number of towns in the United States; it is a baptismal name; and it is the name of one of Great Britain's most important dukedoms. There is no way of knowing what the impact on the purchasing public is likely to be upon seeing "WELLINGTON" watch bracelets and straps, or with what, if anything, purchasers are likely to associate the mark"). Indeed, the board considered the fact that CALISTO was the variant spelling of the Greek mythological nymph "Callisto" in determining that the term was not primarily merely a surname. In re Monotype Corp., 14 USPQ2d 1070, 1071 (TTAB 1989).9 FOOTNOTE 9 "Even when a term had no recognized dictionary meaning, the board considered an applicant's argument that the term SAVA, "is an acronym for ‘Securing America's Valuable Assets.'" In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994)."
  • Case Findng: A name may be rare in terms of frequence of use as a surname in the general population, but not at all rare when viewed as a name repeated in the media and in terms of public perception.
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • The board determined that the "existence of these individuals with the surname ROGAN leads us to conclude that the name may be rare when viewed in terms of frequency of use as a surname in the general population, but not at all rare when viewed as a name repeated in the media and in terms of public perception. Accordingly, we conclude that ROGAN is not a rare surname." In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).
  • Case Finding: We conclude that the surname Giger is not a common surname in the United States.
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • We note that in this appeal there is little evidence that the name Giger has achieved even the modest fame of the surname Rogan and, therefore, we conclude that the surname Giger is not a common surname in the United States and, thus it would be somewhat rare. See United Distillers, 56 USPQ2d at 1221 ("Hackler" held to be a rare surname despite 1295 listings in phone directories).3 FOOTNOTE 3 "While applicant compares the number of Giger hits against the total number of entries in the database, we note that given "the large number of different surnames in the United States, even the most common surnames would represent but small fractions of such a database." Gregory, 70 USPQ2d at 1785."
  • The fact that a term is not a common surname does not mean that a surname would not be considered to be primarily merely a surname.
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • However, the fact that a term is not a common surname does not mean that a surname would not be considered to be primarily merely a surname. See, e.g., In re E. Martinoni Co., 189 USPQ 589, 590 (TTAB 1975) ("The fact that ‘MARTINONI' may be a rare surname does not entitle it to treatment different from what would be accorded to a common surname when no other meaning for the word is shown"). See also In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) ("Applicant's evidence proves that ‘Pirelli' is a rare surname but fails to rebut the Examining Attorney's prima facie showing that ‘Pirelli' would be viewed as a surname by the relevant public").
  • Case Finding: The Federal Circuit has noted that "the examiner made of record evidence that others in a number of cities in this country bear the surname DARTY. Thus, as a surname, DARTY is not so unusual that such significance would not be recognized by a substantial number of persons."
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • In one case, the Federal Circuit has noted that "the examiner made of record evidence that others in a number of cities in this country bear the surname DARTY. Thus, as a surname, DARTY is not so unusual that such significance would not be recognized by a substantial number of persons." In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985).
  • Case Finding: We find that the surname significance of "Giger" would be similarly recognized by prospective purchasers given that others in a number of cities use the surname.
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • In the present case, the listings include New Haven, Connecticut; Springfield, Illinois; South Bend, Indiana; Altoona, Pennsylvania; Glendale, Arizona; Grosse Pointe Woods, Michigan; Madison, Wisconsin; Los Angeles, California; Salem, Oregon; Kansas City, Kansas; and Virginia Beach, Virginia. As with Darty, we find that the surname significance of "Giger" would be similarly recognized by prospective purchasers.
  • Case Finding: Analysis of the second factor – whether anyone is associated with applicant.
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • The second factor we consider is whether anyone associated with applicant has the surname "Giger."
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • Clearly, not only is the name "Giger" the surname of the applicants, but also applicant's surname is featured in applicants' promotional material. Therefore, this factor clearly supports a finding that the term is primarily merely a surname.
  • Case Finding: Analysis of the third factor - whether there is evidence of another recognized meaning of the term.
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • The third factor we consider is whether there is evidence of another recognized meaning of the term GIGER. In this case, there is no evidence that the term "Giger" has any other meaning in English or any other language. In re Isabella Fiore LLC, 75 USPQ2d 1564, 1568 (TTAB 2005) (We "hold that whether a term is primarily merely a surname must take into consideration the meaning the term has in a foreign language").
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • However, we note that even these definitions do not support applicants' arguments. The entries in one include "gig" and "gigerium." Webster's New Universal Unabridged Dictionary (2d ed. 1983). The other, in a German dictionary, defines "gigerl" apparently as "dandy; fop." Duden Oxford (1990). None of these dictionary entries is for the term "Giger" and we cannot conclude that the term "Giger" has any non-surname significance. Therefore, this factor supports the surname significance of the term.
  • The TTAB may take judicial notice of dictionary entries at oral argument.
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • At oral argument, applicants requested that we take judicial notice of possible meanings of the term in two dictionaries. We grant applicants' request and take judicial notice of these definitions. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
  • Case Finding: Analysis of the fourth factor – whether the term has the "look and feel" of a surname.
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • The final factor we address is whether the term has the "look and feel" of a surname. We conclude that it does. First, there are numerous individuals with the surname "Giger." Second, it has no other known significance. See Gregory, 70 USPQ2d at 1796 ("We conclude that ROGAN has the look and sound of a surname. It would not be perceived as an initialism or acronym, and does not have the appearance of having been coined by combining a root element that has a readily understood meaning in its own right with either a prefix or a suffix. Rather, ROGAN appears to be a cohesive term with no meaning other than as a surname") (footnote omitted). Third, it is the surname of both applicants. Therefore, this factor favors the examining attorney's position.
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • However, we must consider the mark as a whole and the mark for which applicants seek registration is not GIGER alone, it is GIGER MD. Therefore, we look at whether the term MD changes the significance of the mark.4 We take judicial notice that M.D. means "Doctor of Medicine." Obviously, when a surname is combined with the term MD, the perception of the term would emphasize that the named person is a doctor. The fact that applicants have added another term to a surname does not automatically detract from the surname significance of the term. This is particularly true in the case of titles and other indicia that simply reinforce the surname meaning of the term. See In re Rath, 402 F.3d 1207, 74 USPQ2d 1174 (Fed. Cir. 2005) (Federal Circuit affirmed board decision holding that DR. RATH was primarily merely a surname); In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (CCPA 1953) ("S. SEIDENBERG & CO.'S" held primarily merely a surname); In re Revillon, 154 USPQ 494, 495 (TTAB 1967) ("Insofar as the ‘MLLE.' portion of applicant's mark is concerned, it is an abbreviation for the word ‘Mademoiselle' which is the French equivalent of the courtesy title ‘Miss'; and, in our opinion, as used it enhances rather than diminishes the surname significance of ‘REVILLON.' It is therefore concluded that ‘MLLE. REVILLON' is primarily merely a surname").
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • Even the use of a mark with other terminology on the specimen can reinforce the surname significance of the mark. Etablissements Darty, 225 USPQ at 653 (The fact that Darty et Fils, used on the specimens, translates as Darty and Son, "in itself, is highly persuasive that the public would perceive DARTY as a surname").
    • In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006).
      • In this case, applicants' goods include medical equipment for physical therapy, orthopedic articles, namely powered exercise machines for therapeutic services, and exercise machines for therapeutic purposes. There would be nothing incongruous with using a surname with the abbreviation MD for medical and therapeutic equipment. It is certainly not a nebulous term that detracts from the surname significance of the mark. See In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988) (HUTCHINSON TECHNOLOGY not primarily merely a surname). Therefore, when we consider the primary significance of the entire mark, GIGER MD, when it is used on applicants' medical, therapeutic, and sporting goods, we conclude that prospective purchasers would understand that the term is primarily merely a surname.
  • The name of an artist, in addition to identifying the artist, may serve a trademark function if it identifies the source of a product and distinguishes it from the goods of another.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • FOOTNOTE 8 "As a general comment, we would point out that the name of an artist, in addition to identifying the artist, may serve a trademark function if it identifies the source of a product and distinguishes it from the goods of another. In re Wood, 217 USPQ 1345 (TTAB 1983). See also: In re Grandma Moses Properties, Inc., 117 USPQ 366 (Com'r Pats 1958)[GRANDMA MOSES functions as a trademark and is registrable for framed fabric prints which are not made or designed by the artist of the same name, but which are made by designers working from, adapting, and stylizing parts of artist's works; the prints are not reproductions of the works of the artist although they retain the "primitive flavor" of the artist's works]."
  • The use of a first name initial followed by a surname reinforces, rather than diminishes, the surname significance of a term.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • It has been stated that the use of a first name initial followed by a surname reinforces, rather than diminishes, the surname significance of a term. In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (CCPA 1953)[S. SEIDENBERG & CO.'S is primarily merely a surname]; and In re Nelson Souto Major Piquet, 5 USPQ2d 1367 (TTAB 1987)[N. PIQUET in form of a signature is primarily merely a surname].
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • This case is distinguishable from In re I. Lewis Cigar Mfg. Co., supra. Unlike the situation there, the addition of the initials "M.C." to the surname "Escher" in the present case does not reinforce the surname significance. Rather, the mark in its entirety conveys the impression that it is a personal name, namely, that of the well known Dutch artist. See: In re Piquet, supra at 1368-69 (dissent).
  • Case Finding: The ample evidence of record bearing on the fame of the Dutch artist convinces us that the primary significance of M.C. ESCHER is that artist. This primary significance far outweighs the surname significance.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • As noted above, applicant acknowledges, and the record shows, that "Escher" is a surname. Nonetheless, we agree with applicant that the mark M.C. ESCHER names a specific individual of considerable renown, and are persuaded that the mark "M.C. ESCHER" is not primarily merely a surname as contemplated under Section 2(e)(4) of the Act. The ample evidence of record bearing on the fame of the Dutch artist convinces us that the primary significance of M.C. ESCHER is that artist. This primary significance far outweighs the surname significance.10 See, e.g., Lucien Picard Watch Corp. v. Since 1968 Crescent Corp., 314 F.Supp. 329, 165 USPQ 459 (SDNY 1970).

        FOOTNOTE 10 "We recognize that the second amended notice of opposition supercedes the first amended pleading. Wright, Miller & Kane, Federal Practice and Procedure: Civil 2d §1476. However, we cannot help noting, in passing, opposer's allegation in its first amended notice of opposition that "[t]he primary significance of the term ‘M.C. Escher' is as the name of the Dutch graphic artist, now deceased.""

  • The mark M.C. ESCHER would no more be perceived as primarily merely a surname than the personal names P.T. Barnum, T.S. Eliot, O.J. Simpson, I.M. Pei and Y.A. Tittle.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • The mark M.C. ESCHER would no more be perceived as primarily merely a surname than the personal names P.T. Barnum, T.S. Eliot, O.J. Simpson, I.M. Pei and Y.A. Tittle.
  • The name of an artist is presumptively not merely descriptive.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • In the absence of use of the mark in this country, we are extremely hard pressed to evaluate this issue in any meaningful way.11 As indicated earlier in this decision, an artist's name on an original work of art may function as a trademark. In re Wood, supra. Thus, the name of an artist is presumptively not merely descriptive.

        FOOTNOTE 11 "Opposer concentrates its arguments on two of the items listed in the identification, namely "pamphlets and booklets relating to the artwork of M.C. Escher." Applicant, in its brief, has offered to delete these specific items from the identification. The Board finds, however, that in the absence of actual use on these goods, no informed decision on this issue can be rendered."

  • Case Finding: The record is devoid of any evidence regarding an industry practice that goods of the type listed by applicant are of the kind that would bear reproductions of an artist's works of art. However logical it may seem, it is difficult to base a holding of mere descriptiveness on such speculation.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • While we intuitively suspect that the value of applicant's mark is logically tied to products bearing reproductions of Mr. Escher's works of art, there simply is no evidence of how the mark will be used. It may be that a product has the "look and feel" of something M.C. Escher might have produced, yet not bear any reproduction or image from his works of art. See: In re Grandma Moses Properties, Inc., supra.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • Indeed, the record is devoid of any evidence regarding an industry practice that goods of the type listed by applicant are of the kind that would bear reproductions of an artist's works of art. However logical it may seem, it is difficult to base a holding of mere descriptiveness on such speculation. See: Eastman Kodak Co. v. Bell & Howell, supra.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • In any event, even assuming arguendo that, as opposer contends, the goods will bear reproductions and images of M. C. Escher's art, we still do not believe that the mark would be merely descriptive of the listed goods. As the Board held in In re Wood, supra, the name of an artist may be inherently distinctive as applied to the artist's original works of art. We see no reason why an artist's name also would not be inherently distinctive as applied to products which bear reproductions or images from the artist's works of art. And opposer has not cited any cases on point which would persuade us to hold differently. Contrary to opposer's arguments, we find that such use of the mark would not be merely descriptive, but rather would be as a source identifier. Thus, we are not surprised that the record reveals that the Office has issued similar registrations of artists' names for a variety of goods.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • With respect to deceptive misdescriptiveness, we view this claim as the opposite side of the same coin. Again, in the absence of evidence of use, that is, how the mark is actually used in commerce, this issue is not ripe for any meaningful analysis on the merits.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • Having said this, we view it as quite unlikely that the artist's name would be used on items that do not have some connection with the art and images created by M.C. Escher. We simply have no idea how the mark M.C. ESCHER will be used on applicant's goods and, thus, we are unable to properly ascertain how the purchasing public likely would perceive the mark.
  • Even if applicant's mark containing a famous name is registered, it will not give applicant the right to interfere with the fair use (even in a prominent fashion) by others.
    • Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999).
      • As essentially acknowledged by applicant, issuance of a registration to it will not give applicant the right to interfere with the fair use (even in a prominent fashion such as that shown by opposer's advertisements) by others of the artist's name in identifying his works of art.
  • Case Finding: Record did not show that the name YBOR was a surname rather than a geographic location.
    • In re South Park Cigar, Inc., Serial No. 78486382, (TTAB 2007)
      • Next, to the extent that applicant is arguing that the primary significance of YBOR is that of a surname, rather than that of a geographic location, we find that the record simply does not support such a contention. The record shows only one person named "Ybor," i.e., the nineteenth-century cigar maker Vicente Martinez Ybor, the founder of Ybor City.
  • Case Finding: While this is unlike cases where the mark is a recognized foreign term, or a mark derived from allegedly recognized foreign terms, the evidence of record nonetheless supports applicant's contention that BAIK sounds like a Russian language term.
    • In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007)
      • We accept applicant's representation that BAIK is a coined term, particularly because there is no evidence that the term has any recognized meaning. Furthermore, we agree with applicant that BAIK, even though a coined term, sounds like a word in the Russian language. We also agree that the mark evokes or sounds similar to the word "Baikal," which has a recognized geographic significance, denoting a lake and mountain range in the Siberian region of Russia. Thus, while this is unlike cases where the mark is a recognized foreign term, or a mark derived from allegedly recognized foreign terms, the evidence of record nonetheless supports applicant's contention that BAIK sounds like a Russian language term. Cf. In re Picone, 221 USPQ 93, 94 (TTAB 1984); and In re Carl Braun, Camerawerk, 124 USPQ 184, 185 (TTAB 1960).
  • Case Finding: J.J. Yeley is not primarily merely a surname.
    • In re J. J. Yeley, Serial No. 78489186, (TTAB 2007)
      • In sum, based on the record in this case, we find that "Yeley" is a rare surname and that the designation at issue, J. J. YELEY, has significance as the race car driver and has the "look and sound" of a personal name, not a surname. Accordingly, we conclude that J. J. YELEY is not primarily merely a surname. Furthermore, as noted above, we must resolve any doubt in favor of applicant. In re Benthin Management GmbH, supra.
  • Case Finding: It would not be perceived as an initialism or acronym, see Sava, supra, and does not have the appearance of having been coined by combining a root element that has a readily understood meaning in its own right with either a prefix or a suffix.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • We conclude that ROGAN has the look and sound of a surname. It would not be perceived as an initialism or acronym, see Sava, supra, and does not have the appearance of having been coined by combining a root element that has a readily understood meaning in its own right with either a prefix or a suffix. Rather, ROGAN appears to be a cohesive term with no meaning other than as a surname.
  • Case Finding: In the past, in cases involving historical names, the Board has drawn a line between those names considered so widely recognized as to be almost exclusively associated in terms of commercial impressions with the historical figures" and those names "semihistorical in character.
    • In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002).
      • In the past, in cases involving historical names, the Board has drawn a line between those names considered so widely recognized as to be "almost exclusively associated in terms of commercial impressions with the historical figures" and those names "semihistorical in character." In re Pickett Hotel Company, supra.
    • In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002).
      • The Examining Attorney also makes reference to the Board's statement in In re Pickett Hotel Company, 229 USPQ 760, 761-2 (TTAB 1986) that: "The decisions concerning historical names draw a line between names which are so widely recognized that they are almost exclusively associated in terms of their commercial impressions with the historical figures, e.g., Lucien Piccard Watch Corp. v. Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) [DA VINCI] and names which are semihistorical in character. E.g., Frances Rothschild, Inc. v. U.S. Cosmetic Fragrance Corp., 223 USPQ 817 (N.D. Tex 1983)[ROTHSCHILD]; In re Champion International Corp., 229 USPQ 550 (TTAB 1985)[MCKINLEY]; In re Villiger Sohne GmbH, 205 USPQ 465 (TTAB 1979) [BRANIFF]; Ex parte Wayne Pump Co., 88 USPQ 437 (Ex'r-in-Chief 1951)[WAYNE][Additional citation omitted.]
    • In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002).
      • In the past, in cases involving historical names, the Board has drawn a line between those names considered so widely recognized as to be "almost exclusively associated in terms of commercial impressions with the historical figures" and those names "semihistorical in character." In re Pickett Hotel Company, supra.
  • Case Finding: The primary significance of the term "Sousa", as used in connection with fireworks, is as the name of a specific person well known for patriotic music.
    • In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002).
      • But present day recognition of John Philip Sousa is not the only factor to be considered in determining the primary significance of the term SOUSA. Even more important under the present circumstances is the specific nature of applicant's goods and services and the significance of the term SOUSA when used therewith. Applicant intends to use the term SOUSA in connection with fireworks and with shows featuring pyrotechnics. Clearly these are goods and services which would be associated by potential purchasers with patriotic events such as the Fourth of July, patriotic figures, and patriotic music. Thus, we agree with applicant that when the relevant purchasing public encounters the term SOUSA, as it is intended to be used in connection with applicant's fireworks and fireworks displays, the immediate association of the term SOUSA will be with the famous "March King," John Philip Sousa. The primary significance of the term SOUSA, as used in connection with these goods and services, is as the name of a specific person well known in American history for his patriotic music.
  • Case Finding: Although "Sousa" may also be a surname in current use in the United States, any such connotation of the term would clearly be secondary in significance when consideration is given to the particular nature of applicant's goods and services.
    • In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002).
      • Although "Sousa" may also be a surname in current use in the United States, any such connotation of the term would clearly be secondary in significance when consideration is given to the particular nature of applicant's goods and services.
  • Case Finding: There is nothing in the record to show that any of these places are so well known that the geographic significance as a place name would overshadow the surname significance of the term.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • Moreover, there is nothing in the record to show that any of these places are so well known that the geographic significance of, for example, Roganville as a place name would overshadow the surname significance of the term ROGAN. Cf. In re Colt Industries Operating Corp., 195 USPQ 75 (TTAB 1977) (significance of FAIRBANKS as a well-known city in Alaska at least equal to its surname significance).
  • Case Finding: Balancing the various factors, we find that "Rogan" is not a rarely used surname, has the look and sound of a surname, and its primary significance as a surname is not outweighed by other meanings which may be ascribed to the term.
    • In re Gregory, Serial No. 76277664, (TTAB 2004).
      • Balancing the various factors, we find that ROGAN is not a rarely used surname, has the look and sound of a surname, and its primary significance as a surname is not outweighed by other meanings which may be ascribed to the term. See Harris-Intertype, supra, and In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993).
  • Case Finding: Analysis under the fourth factor, the "look and feel" factor.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • The fourth factor is whether the term has the "look and feel" of a surname. In this case, applicant uses the term "Fiore" as part of its corporate name Isabella Fiore, LLC. This name would appear to be the name of a real or fictitious individual named Isabella Fiore. The other evidence indicates that thousands of people living in the United States have the surname "Fiore". See Gregory, 70 USPQ2d at 1796 ("We conclude that ROGAN has the look and sound of a surname. It would not be perceived as an initialism or acronym, and does not have the appearance of having been coined by combining a root element that has a readily understood meaning in its own right with either a prefix or a suffix. Rather, ROGAN appears to be a cohesive term with no meaning other than as a surname") (footnote omitted).
  • Case Finding: Applicant's argument that the term has historical significance because it is associated with a number of historical people, events, and customs is not persuasive.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • Similarly, applicant's argument (Brief at 10) that the term "Fiore" has historical significance because it "is associated with a number of historical people, events, and customs, including the Italian mystic and philosopher Joachim of Fiore and the classic Italian folk dance, ‘Ballo del Fiore' (‘Dance of the Flower')" is not persuasive.
  • Case Finding: The term "McKinley" was held to be a surname in the United States despite its many non-surname uses and its association with an American president.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • Even the term McKINLEY was held to be a surname in the United States despite its many non-surname uses and its association with an American president. "Applicant, in turn, asserted that "McKinley" is the name of a county in New Mexico with a population of 64,000, and filed the affidavit of its corporate librarian, Katherine Christiano, who stated that in a search for uses of the word "McKinley" she found 1 airport (in Michigan), 1 bay (in the Northwest Territory), 1 hospital (in Illinois), 1 Mountain (in Alaska), 1 museum (in Ohio), 2 parks (in Pittsburg[h] and Alaska), 1 peak (in Antarctica), 1 river (in Alaska), 149 schools, and 19 cities and towns. In addition, applicant argued that "MCKINLEY" is not primarily merely a surname because it has "extraordinary historical significance." In this regard, applicant maintains: . . . It is the name of the 25th president of the United States who was assassinated while in office and was memorialized in the names of schools, streets, parks, and even a mountain, throughout the United States and its territories. In this regard, the surname McKinley is in the historical class of assassinated presidents with Lincoln and Kennedy, and memorialized as they are, and as in another president who died in office, Franklin D. Roosevelt." In re Champion International Corp., 229 USPQ 550, 550 (TTAB 1985).
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • In that case, the board found that the name was not of "extraordinary historical significance," and we are even less persuaded that the term "Fiore" as the name of an Italian philosopher and as part of the name of an Italian folk dance would have more significance to purchasers in the United States than the surname of an American president.
  • Case Finding: Cases where board considered the term's foreign language meaning before it determined that the term was primarily merely a surname.
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • In a previous case, when the board held that PIRELLI was a surname, it relied on evidence that PIRELLI "has no ordinary meaning in the Italian language, as the Italian dictionary excerpt, made of record by the Examining Attorney, shows." In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988).8

        FOOTNOTE 8 Balancing the various factors, we find that ROGAN is not a rarely used surname, has the look and sound of a surname, and its primary significance as a surname is not outweighed by other meanings which may be ascribed to the term. See Harris-Intertype, supra, and In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993).In In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ2d 652, 653 (Fed. Cir. 1985), the Federal Circuit, in affirming the board's determination that "Darty" was a surname, noted that the board found that the term did not appear in dictionaries as a French or English word and that applicant did not submit any evidence that the term has any non-surname significance."

    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • In other cases, the board considered the term's foreign language meaning before it determined that the term was primarily merely a surname in the United States. In re Picone, 221 USPQ 93, (TTAB 1984) (Dictionary showing that "Piccone" was the Italian word for "pick, pick ax" was not sufficient to overcome surname significance of the term PICONE); In re Carl Braun, Camerawerk, 124 USPQ 184 (TTAB 1960) (Despite the fact that "Braun" was the German word for "brown," the board held that "it is clear that it is applicant's surname, it is used as such, and it would be thought of and recognized as such by the average purchaser").
    • In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005).
      • Indeed, that is the standard procedure when encountering foreign words in a trademark. For example, the term KUPPERS KOLSCH was held to be primarily merely a surname for beer because the evidence established that KUPPER was a surname and "Kolsch" was a type of beer produced in Cologne, Germany. Wickuler-Kupper-Brauerei, 221 USPQ at 470. It would be inconsistent to translate the second term and ignore the translation, if there was one, of the first term.
  • Discussion of fourth factor for BINION term.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The fourth factor, whether "Binion" has the look and feel of a surname, is very subjective. We find that "Binion" looks and sounds like a surname. The record shows that such term has no readily recognized meaning other than its surname significance. Further, on its face, "Binion" does not look like a coined term or an acronym, nor like anything else but a surname. This is especially the case with the possessive form of the term, "Binion's," that serves to reinforce its impression as a surname.
  • Discussion of history surrounding issue of registering surnames.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • Judge Seeherman explained, in In re Piquet, that the 1946 Trademark Act changed the prohibition against registering names to one against registering marks that are primarily merely surnames and that the Commissioner and courts were slow to enact that change: The "Seidenberg" case was an early decision interpreting Section 2(e)(3) [now Section 2(e)(4)] of the Trademark Act of 1946. Under the former Act of 1905, registration of marks consisting of the names of individuals and, by interpretation, surnames as being the significant portion of an individual's name, was prohibited. Section 5 of the Trademark Act of 1905, Ex Parte Dallioux, 83 USPQ 262 (Comr. Pats. 1949). It appears some of the general reluctance to register surnames and individual names under the previous Act had a residual influence, and the Court accordingly interpreted the restrictions of Section 2(e)(3) broadly. In re Piquet, 5 USPQ2d 1367, 1368 (TTAB 1987)(Seeherman, J., dissenting).
  • Case Finding: The mark P.J. FITZPATRICK, INC. is not primarily merely a surname.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • In view of the foregoing, we hold that the mark P.J. FITZPATRICK, INC. is not primarily merely a surname.
  • The TTAB must determine the primary significance of the mark to the purchasing public.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • In other words, we must determine the primary significance of P.J. FITZPATRICK, INC. to the purchasing public. Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000).
  • Moreover, it is common knowledge that some persons use initials in lieu of a given name.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • FOOTNOTE 1 "The Little Giant Encyclopedia of Names, p. 20 (1999; What's In A Name? . . . Everything You Wanted To Know, pp. 75-76 (1989). The Board may take judicial notice of dictionaries and standard reference works. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (dictionary definitions and encyclopedias); Sprague Electric Co. Electrical Utilities Co., 209 USPQ 88, 95 n.3 (TTAB 1980) (standard reference works). Moreover, it is common knowledge that some persons use initials in lieu of a given name."
  • The TTAB notes that a segment of American society uses initials rather than given names.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • In contrast, the addition to FITZPATRICK of the leading initials P.J. is more significant. We note that a segment of American society uses initials rather than given names.
  • "Merely" is synonymous with "only," and "primarily" refers to "first in order" or "fundamentally."
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • "Merely" is synonymous with "only," and "primarily" refers to "first in order" or "fundamentally."
  • Generally, a statement of five years' use will be sufficient to establish acquired distinctiveness.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • This purpose is served until such time as the person has used his/her surname as a trademark or service mark to an extent sufficient to establish acquired distinctiveness. Generally, a statement of five years' use will be sufficient to establish acquired distinctiveness. TMEP §1212.05(a) (6th ed., rev. 1, 2009).
  • While hardly a common surname, "Binion" is not so rare that it would not be recognized as a surname.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • With respect to the first factor, the examining attorney introduced the results of a search of "Binion" using the Lexis/Nexis USFIND database. This search of a nationwide telephone directory shows 1416 listings of the surname "Binion." Thus, while hardly a common surname, "Binion" is not so rare that it would not be recognized as a surname. See In re Etablissements Darty et Fils, 225 USPQ at 653; and In re Rebo High Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990).
  • The USPTO has the burden of establishing a prima facie case that a term is primarily merely a surname.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The USPTO has the burden of establishing 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, 653 (Fed. Cir. 1985).
  • The issue is whether the proposed mark, under the law, is primarily (i.e., fundamentally) only a surname.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • There is no doubt that FITZPATRICK alone is primarily merely a surname. There is also no doubt that P.J. FITZPATRICK, INC. is clearly more than just a surname. However, the issue is whether the proposed mark, under the law, is primarily (i.e., fundamentally) only a surname.
  • The statute provides that registration should be refused if the proposed mark is primarily merely a surname.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • The statute provides that registration should be refused if the proposed mark is "primarily merely a surname."
  • A segment of society uses multiple initials in lieu of given names, a fact not before the court in Lewis Cigar.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • In this case, there are two initials, not one initial, and, as indicated above, a segment of society uses multiple initials in lieu of given names, a fact not before the court in Lewis Cigar. See Brooks v. Creative Arts By Calloway LLC, 98 USPQ2d 1823, 1828-1829 (TTAB 2010) ("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).
  • The surname significance of a term is not diminished by the fact that the term is presented in its possessive form.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • As to the mark in possessive form, BINION'S, the surname significance of a term is not diminished by the fact that the term is presented in its possessive form. See In re Woolley's Petite Suites, 18 USPQ2d 1810 (TTAB 1991). See also TMEP §1211.01(b)(v) (6th ed., rev. 1, 2009).
  • A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person. See In re Pyro- Spectaculars, Inc., 63 USPQ2d 2022, 2024 (TTAB 2002).
  • Evidence that an individual is famous in a particular field does not necessarily establish that the person is a historical figure.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Evidence that an individual is famous in a particular field does not necessarily establish that the person is a historical figure. In re Thermo LabSystems Inc., 85 USPQ2d 1285 (TTAB 2007).
  • The law is settled that the mere addition to a surname of an entity designation such as "INC." does not transform the surname into a mark.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • The law is settled that the mere addition to a surname of an entity designation such as "INC." does not transform the surname into a mark. See Lewis Cigar, 98 USPQ at 267 ("the addition of the expression '& Co's.,' whether it be the abbreviated and possessive form present here, or in the usual form, cannot be held to distinguish or relate to anything except the surname 'Seidenberg.'").
  • Case Finding: P.J. FITZPATRICK, INC. cannot be primarily merely a surname because it comprises an entire personal name, not merely a surname.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • We find that in this case the initials P.J. coupled with FITZPATRICK would be perceived as the given name. Thus, P.J. FITZPATRICK, INC. cannot be primarily merely a surname because it comprises an entire personal name, not "merely" a surname.
  • Regardless of the rarity of the surname, the test is whether the primary significance of the term to the purchasing public is that of a surname.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Regardless of the rarity of the surname, the test is whether the primary significance of the term to the purchasing public is that of a surname.
  • The test for determining whether a mark is primarily merely a surname is the primary significance of the mark as a whole to the purchasing public.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • As stated at the beginning of this decision, the test for determining whether a mark is primarily merely a surname is the primary significance of the mark as a whole to the purchasing public. In re Harris-Intertype Corp., 186 USPQ at 239; see also In re Hutchinson Technology, 7 USPQ2d 1490, 1492 (TTAB 1988) (a mark sought to be registered must be considered in its entirety).
  • In Lewis Cigar, the court did not find as a matter of law that a single initial added to a surname could never convey something other than surname significance.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • Moreover, we note that in Lewis Cigar, the court did not find as a matter of law that a single initial added to a surname could never convey something other than surname significance. Based on the facts of the case before it, the court made the following finding: "It seems to us that "Seidenberg" is clearly a surname which can have no other meaning or significance than that of a surname. Nor do we believe that the addition of the single initial is sufficient to remove it from that category." Lewis Cigar, 98 USPQ at 267.
  • The TTAB must consider the mark as a whole and determine whether the addition of initials and the entity designation creates a mark that is more than a surname.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • We must consider the mark as a whole (i.e., in its entirety) and determine whether the addition of the initials "P.J." and the entity designation "INC." to "FITZPATRICK" creates a mark that is more than a surname: in other words, whether these additions remove the subject matter at issue - - P. J. FITZPATRICK, INC. - - from being primarily merely a surname.
  • Case Finding: Mr. Binion's personal history is not in any way so extraordinary that he warrants treatment under the "historical person" exception to the surname refusal.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • We do not find that Mr. Binion's personal history is in any way so extraordinary that he warrants treatment under the "historical person" exception to the surname refusal. That is to say, although the evidence of record shows that Mr. Binion has played a significant role in the gaming industry in Las Vegas, his notoriety in this regard is not so remarkable or so significant that he is a historical figure as contemplated by the case law. Id. at 1289.
  • Case Finding: The renown of Jack Binion does not establish that BINION is no longer perceived as a surname by purchasers, but rather as a service mark for services emanating from applicant.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • All of the evidence submitted by applicant shows that purchasers would regard "Binion" or "Binion's" as a surname; it is the surname of Jack, as well as Benny, Jack's father, and Becky, Jack's sister. The record is devoid of any use of the term "Binion" or "Binion's" as a trademark or service mark, let alone use to an extent sufficient to show acquired distinctiveness. Simply put, the renown of Jack Binion and the Binion family name in the gaming industry does not establish that "Binion" is no longer perceived as a surname by purchasers, but rather as a service mark for services emanating from applicant.
  • The U.S. Court of Appeals for the District of Columbia Circuit in the J C HIGGINS case did not rule as a matter of law that initials added to a surname cannot alter the significance of a surname.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • Furthermore, the U.S. Court of Appeals for the District of Columbia Circuit in the J C HIGGINS case did not rule as a matter of law that initials added to a surname cannot alter the significance of a surname for purposes of determining whether that mark is primarily merely a surname, or may be primarily something else (i.e., a personal name).
  • The court has stated that it strongly doubts that Congress intended such a decisive distinction to be made between initials and given names in determining whether a mark is primarily merely a surname.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • The court discussed earlier cases involving "ANDRE DALLIOUX," which was allowed to register, and "J C HIGGINS," which was denied registration because it was found to be primarily merely a surname. The court went on to note, "it seems to us that the initials in the Higgins mark should have received equal consideration to that given 'Andre' in the Dallioux mark. We strongly doubt that Congress intended such a decisive distinction to be made between initials and given names in determining whether a mark is primarily merely a surname." 98 USPQ at 267.
  • The record fails to show that "Binion" has any meaning other than as a surname, and as to the third factor, the examining attorney submitted a dictionary excerpt showing the absence of an entry for "Binion."
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The record fails to show that "Binion" has any meaning other than as a surname. On this third factor, the examining attorney submitted a dictionary excerpt showing the absence of an entry for "Binion."
  • Lewis Cigar does not preclude a finding that the addition of a single initial creates the commercial impression of a personal name rather than a surname where the facts in the record support such a finding.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • Thus, Lewis Cigar does not preclude a finding that the addition of a single initial creates the commercial impression of a personal name rather than a surname where the facts in the record support such a finding.
  • The statute provides that registration should be refused if the proposed mark is "primarily merely a surname." "Merely" is synonymous with "only," and "primarily" refers to "first in order" or "fundamentally."
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • The statute provides that registration should be refused if the proposed mark is "primarily merely a surname." "Merely" is synonymous with "only," and "primarily" refers to "first in order" or "fundamentally." Thus, we must determine whether P.J. FITZPATRICK, INC. is fundamentally only a surname. In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265, 267 (CCPA 1953).
  • The question of whether a word sought to be registered is primarily merely a surname within the meaning of the statute can only be resolved on a case by case basis, taking into account a number of various factual considerations.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • Moreover, "[t]he question of whether a word sought to be registered is primarily merely a surname within the meaning of the statute can only be resolved on a case by case basis," taking into account a number of various factual considerations. Id.
  • There is no per se rule that the addition of an initial(s) to a surname means that the mark is automatically primarily merely a surname. It depends on the principal or ordinary significance of the term, and that is a question of fact.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • As we explained in Yeley, "there is no per se rule that the addition of an initial(s) to a surname means that the mark is automatically primarily merely a surname. It depends on the principal or ordinary significance of the term, and that is a question of fact" based on the facts made of record. Yeley, 85 USPQ2d at 1154; In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985) ("with respect to issues of fact, no precedential value can be given to the quantum of evidence apparently accepted in a prior case").
  • The observation by the CCPA in Lewis Cigar about the discrepancy between the holdings in Sears, Roebuck and Dallioux strongly suggests that the coupling of two initials and a surname creates a full name and therefore a registrable mark.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • The observation by the CCPA in Lewis Cigar about the discrepancy between the holdings in Sears, Roebuck (J C HIGGINS) and Dallioux (ANDRE DALLIOUX), strongly suggests that the coupling of two initials and a surname creates a full name and therefore a registrable mark.
  • The weight of authority construing the surname provision of the Trademark Act since Sears, Roebuck suggests that the decision perhaps unduly emphasized the surname in the mark J C HIGGINS, by dissecting the mark and discounting the impact of the initials J C.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • Moreover, the weight of authority construing the surname provision of the Trademark Act since Sears, Roebuck suggests that the decision perhaps unduly emphasized the surname in the mark J C HIGGINS, by dissecting the mark and discounting the impact of the initials J C. Certainly the Court of Customs and Patent Appeals in Lewis Cigar noted the perhaps odd result in the Sears, Roebuck case, vis-àvis the intent of Congress.
  • It is that impact or impression how the mark is perceived which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • It "is that impact or impression [how the mark is perceived] which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname." In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975), quoting, Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm'r 1955).
  • In Lewis Cigar, the court essentially stated that there should be no distinction between marks consisting of two initials coupled with a surname and marks consisting of a given name coupled with a surname, in terms of finding one coupling to be primarily merely a surname and the other not.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • In Lewis Cigar, the court essentially stated that there should be no distinction between marks consisting of two initials coupled with a surname and marks consisting of a given name coupled with a surname, in terms of finding one coupling to be primarily merely a surname and the other not.
  • The purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses, in the same manner that merely descriptive terms are prohibited from registration because competitors should be able to use a descriptive term to describe their own goods or services.
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • The purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses, in the same manner that merely descriptive terms are prohibited from registration because competitors should be able to use a descriptive term to describe their own goods or services.
  • Although the TTAB, in certain recent decisions, has held that particular marks consisting of initials coupled with a surname are not primarily merely surnames, the TTAB has clarified that, if a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily merely a surname.
    • In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010)
      • Although the Board, in certain recent decisions, has held that particular marks consisting of initials coupled with a surname are not primarily merely surnames, see In re Yeley, 85 USPQ2d 1150 (TTAB 2007) (J. J. YELEY) and Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132 (TTAB 2000) (M.C. ESCHER), in view of the statements by the court in Lewis Cigar, we hereby clarify that, if a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily merely a surname.
  • Five accepted factors to be considered in the analysis: (1) Is the word a common or rarely used surname? (2) Does anyone connected with the applicant have that surname? (3) Does the word have meaning other than as a surname? (4) Does the word look and sound like a surname? (5) Is the word presented in use in a stylized form distinctive enough to create a separate non-surname impression?
    • In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009)
      • There are five accepted factors to be considered in the analysis: (1) Is the word a common or rarely used surname? (2) Does anyone connected with the applicant have that surname? (3) Does the word have meaning other than as a surname? (4) Does the word look and sound like a surname? (5) Is the word presented in use in a stylized form distinctive enough to create a separate non-surname impression? In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995).
In re P.J. Fitzpatrick, Inc., Serial No. 77256618 (TTAB 2010) In re Jack B. Binion, Serial Nos. 76590702 and 76590729 (TTAB 2009) In re J. J. Yeley, Serial No. 78489186, (TTAB 2007) In re Joint-Stock Company "Baik", Serial No. 78521961, (TTAB 2007) In re Piano Factory Group Inc., Serial No. 78157550, (TTAB 2007) In re Thermo LabSystems Inc., Serial No. 78204502, (TTAB 2007) In re Adrian Giger and Thomas Giger, Serial No. 76545470, (TTAB 2006) In re Isabella Fiore, LLC, Serial No. 76445173, (TTAB 2005) In re Gregory, Serial No. 76277664, (TTAB 2004) In re Pyro-Spectaculars, Inc., Serial No. 75/398,909, (TTAB 2002) Michael S. Sachs, Inc. v. Cordon Art, B.V., Opposition No. 95,655, (TTAB 1999) Grand Total
Brooks v. Creative Arts By Calloway LLC, 98 USPQ2d 1823 (TTAB 2010) 1
In re Thermo LabSystems Inc., 85 USPQ2d 1285 (TTAB 2007) 1
In re Yeley, 85 USPQ2d 1150 (TTAB 2007) 1
In re Giger, 78 USPQ2d 1405 (TTAB 2006) 1
In re First Draft Inc., 76 USPQ2d 1183 (TTAB 2005) 1
In re Isabella Fiore LLC, 75 USPQ2d 1564 (TTAB 2005) 1
In re Rath, 402 F.3d 1207, 74 USPQ2d 1174 (Fed. Cir. 2005) 2
Palm Bay Import Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) 1
In re Gregory, 70 USPQ2d 1792 (TTAB 2004) 4
In re Pyro-Spectaculars, Inc., 63 USPQ2d 2022 (TTAB 2002) 1
In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) 6
Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132 (TTAB 2000) 2
Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB 1998) 1
In re Benthin Management Gmbh, 37 USPQ2d 1332 (TTAB 1995) 8
In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994) 5
Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 994 F.2d 1569, 26 USPQ2d 1912 (Fed. Cir. 1993) 1
In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993) 5
In re Advanced Spine Fixation Systems Inc., 25 USPQ2d 1367 (TTAB 1992) 1
In re S. Oliver Bernd Freier GmbH & Co., 20 USPQ2d 1878 (TTAB 1991) 1
In re Woolley's Petite Suites, 18 USPQ2d 1810 (TTAB 1991) 1
In re Rebo High Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990) 1
In re Monotype Corp., 14 USPQ2d 1070 (TTAB 1989) 1
B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988) 1
In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988) 4
In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988) 4
In re Raivico, 9 USPQ2d 2006 (TTAB 1988) 1
In re Garan Inc., 3 USPQ2d 1537 (TTAB 1987) 2
In re Nelson Souto Major Piquet, 5 USPQ2d 1367 (TTAB 1987) 2
In re Piquet, 5 USPQ2d 1367 (TTAB 1987) 3
In re Ithaca Industries Inc., 230 USPQ 702 (TTAB 1986) 1
In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986) 2
In re Champion International Corp., 229 USPQ 550 (TTAB 1985) 4
In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) 9
In re Taverniti, SARL, 225 USPQ 1263 (TTAB 1985) 1
In re Picone, 221 USPQ 93, (TTAB 1984) 2
Frances Rothschild Inc. v. U.S. Cosmetic Fragrance Corp., 223 USPQ 817 (N.D. Tex 1983) 1
In re Wickuler-Kupper-Brauerei KGaA, 221 USPQ 469 (TTAB 1983) 1
In re Wood, 217 USPQ 1345 (TTAB 1983) 1
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co. Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) 2
Sprague Electric Co. Electrical Utilities Co., 209 USPQ 88 (TTAB 1980) 1
In re Villiger Sohne GmbH, 205 USPQ 465 (TTAB 1979) 1
In re Champion International Corporation, 196 USPQ 48 (TTAB 1977) 1
In re Colt Industries Operating Corp., 195 USPQ 75 (TTAB 1977) 1
In re Optica International, 196 USPQ 775 (TTAB 1977) 1
In re E. Martinoni Co., 189 USPQ 589 (TTAB 1975) 2
In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975) 6
In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (CCPA 1975) 1
Lucien Picard Watch Corp. v. Since 1968 Crescent Corp., 314 F.Supp. 329, 165 USPQ 459 (SDNY 1970) 2
Fisher Radio Corp. v. Bird Electronic Corp., 162 USPQ 265 (TTAB 1969) 1
In re Winegard Co., 162 USPQ 261, 262-63 (TTAB 1969) 1
In re Revillon, 154 USPQ 494 (TTAB 1967) 1
Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411 (CCPA 1961) 1
In re Carl Braun, Camerawerk, 124 USPQ 184 (TTAB 1960) 2
In re Grandma Moses Properties Inc., 117 USPQ 366 (Com'r Pats 1958) 1
Ex parte Gemex Co., 111 USPQ 443 (Comm'r Pat. 1956) 1
Ex parte Rivera Watch Corp., 106 UPSQ 145 (Comm'r 1955) 5
In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (CCPA 1953) 5
In re Sears, Roebuck & Co., 87 USPQ 400 (Comr. Pats. 1950), aff'd, 204 F.2d 32, 96 USPQ 360 (CA DC 1953)  2
Ex parte Wayne Pump Co., 88 USPQ 437 (Ex'r-in-Chief 1951) 1
Ex parte Dallioux, 83 USPQ 262 (Comr. Pats. 1949) 2
Grand Total 13 6 12 9 8 11 14 27 7 11 9 127

Sec. 1052. Trademarks registrable on principal register; concurrent registration

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--
  1. (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States.
  2. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.
  3. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
  4. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
  5. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.
  6. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.