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T.M.E.P. § 1211.01
'Primarily Merely a Surname'

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1211.01 "Primarily Merely a Surname"

The legislative history of the Trademark Act of 1946 indicates that the word "primarily" was added to the existing statutory language "merely" with the intent to exclude registration of names such as "Johnson" or "Jones," but not registration of names such as "Cotton" or "King" which, while surnames, have a primary significance other than as a surname. See Sears, Roebuck & Co. v. Watson, 204 F.2d 32, 33-34, 96 USPQ 360, 362 (D.C. Cir. 1953), cert. denied, 346 U.S. 829, 99 USPQ 491 (1953); Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm'r Pats. 1955).

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) whether the surname is rare (see TMEP §1211.01(a)(v)) ;
(2) whether the term is the surname of anyone connected with the applicant (see TMEP §1211.02(b)(iii)) ;
(3) whether the term has any recognized meaning other than as a surname (see TMEP §§1211.01(a) et seq.);
(4) whether it has the "look and feel" of a surname (see TMEP §1211.01(a)(vi)) ; and
(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).

1211.01(a) Non-Surname Significance

Often a word will have a meaning or significance in addition to its significance as a surname. The examining attorney must determine the primary meaning of the term to the public. See TMEP §§1211.01(a)(i) et seq. regarding considerations that often arise in determining whether a term is primarily merely a surname.

1211.01(a)(i) Ordinary Language Meaning

If there is a readily recognized meaning of a term, apart from its surname significance, such that the primary significance of the term is not that of a surname, registration should be granted on the Principal Register without evidence of acquired distinctiveness. See In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (the relatively rare surname HACKLER held not primarily merely a surname, in light of dictionary meaning); Fisher Radio Corp. v. Bird Electronic Corp., 162 USPQ 265 (TTAB 1969) (BIRD held not primarily merely a surname despite surname significance); In re Hunt Electronics Co., 155 USPQ 606 (TTAB 1967) (HUNT held not primarily merely a surname despite surname significance). However, this does not mean that an applicant only has to uncover a non-surname meaning of the proposed mark to obviate a refusal under §2(e)(4). See In re Nelson Souto Major Piquet, 5 USPQ2d 1367, 1368 (TTAB 1987) (N. PIQUET (stylized) held primarily merely a surname despite significance of the term "piquet" as "the name of a relatively obscure card game").

1211.01(a)(ii) Phonetic Equivalent of Term With Ordinary Language Meaning

A term may be primarily merely a surname even if it is the phonetic equivalent of a word that has an ordinary meaning (e.g., Byrne/burn; Knott/not or knot; Chappell/chapel). See In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986) (PICKETT SUITE HOTEL held primarily merely a surname despite applicant's argument that PICKETT is the phonetic equivalent of the word "picket"). Cf. In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071 (TTAB 1989) (CALISTO held not primarily merely a surname, the Board characterizing the telephone directory evidence of surname significance as "minimal" and in noting the mythological significance of the name "Callisto," stating that it is common knowledge that there are variations in the rendering of mythological names transliterated from the Greek alphabet (distinguishing In re Pickett Hotel Co., supra)). Similarly, the fact that a word that has surname significance is also a hybrid or derivative of another word having ordinary language meaning is insufficient to overcome the surname significance unless the perception of non-surname significance would displace the primary surname import of the word. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) (DARTY held primarily merely a surname despite applicant's argument that the mark is a play on the word "dart"); In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (PETRIN held primarily merely a surname despite applicant's argument that the mark represents an abbreviation of "petroleum" and "insulation").

1211.01(a)(iii) Geographical Significance

A term with surname significance may not be primarily merely a surname if that term also has a well-known geographical meaning. In re Colt Industries Operating Corp., 195 USPQ 75 (TTAB 1977) (FAIRBANKS held not primarily merely a surname because the geographical significance of the mark was determined to be just as dominant as its surname significance). However, 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 Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939, 1943 (TTAB 1993) (HAMILTON held primarily merely a surname).

1211.01(a)(iv) Historical Place or Person

A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person. See Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (DA VINCI found not primarily merely a surname because it primarily connotes Leonardo Da Vinci); In re Pyro-Spectaculars, Inc., 63 USPQ2d 2022, 2024 (TTAB 2002) (SOUSA for fireworks and production of events and shows featuring pyrotechnics held not primarily merely a surname, where the evidence showed present day recognition and continuing fame of John Philip Sousa as a composer of patriotic music, and the applicant's goods and services were of a nature that "would be associated by potential purchasers with patriotic events such as the Fourth of July, patriotic figures, and patriotic music"); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132 (TTAB 2000) (primary significance of M. C. ESCHER is that of famous deceased Dutch artist). Cf. In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986) (PICKETT SUITE HOTEL held primarily merely a surname despite applicant's evidence that PICKETT was the name of a famous Civil War general); In re Champion International Corp., 229 USPQ 550 (TTAB 1985) (McKINLEY held primarily merely a surname despite being the name of a deceased president).

1211.01(a)(v) Rare Surnames

The rarity of a surname is a factor to be considered in determining whether a term is primarily merely a surname. In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995) (the fact that BENTHIN was a rare surname found to be a factor weighing against a finding that the term would be perceived as primarily merely a surname); In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994) (SAVA not primarily merely a surname, where there was evidence that the term had other meaning, no evidence that the term was the surname of anyone connected with applicant, and the term's use as a surname was very rare); In re Garan Inc., 3 USPQ2d 1537 (TTAB 1987) (GARAN held not primarily merely a surname). However, the fact that a surname is rare does not per se preclude a finding that a term is primarily merely a surname. Even a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) (DARTY held primarily merely a surname); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990) (REBO held primarily merely a surname); In re Pohang Iron & Steel Co., Ltd., 230 USPQ 79 (TTAB 1986) (POSTEN held primarily 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.

An issue to be considered in determining how rarely a term is used is the media attention or publicity accorded to public personalities who have the surname. A surname rarely appearing in birth records may nonetheless appear more routinely in news reports, so as to be broadly exposed to the general public. In re Gregory, 70 USPQ2d 1792 (TTAB 2004).

1211.01(a)(vi) "Look And Feel" of a Surname

There are some names which by their very nature have only a surname significance even though they are rare surnames. See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988), aff'd, 883 F.2d 1026 (Fed. Cir. 1989) (PIRELLI held primarily merely a surname, the Board stating that "certain rare surnames look like surnames and certain rare surnames do not and ... 'PIRELLI' falls into the former category...."); In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (PETRIN held primarily merely a surname). Conversely, there is a category of surnames that are so rare that they do not even have the appearance of surnames. Where these are involved, even in the absence of non-surname significance, a reasonable application of the test of "primary significance to the purchasing public" could result in a finding that such a surname, when used as a mark, would be perceived as arbitrary or fanciful. In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (HACKLER does not have the look and feel of a surname).

1211.01(b) Surname Combined with Additional Matter

Often a mark will be comprised of a word that, standing by itself, would be primarily merely a surname, coupled with additional matter (e.g., letters, words, designs). The question remains whether the mark sought to be registered would be perceived by the public primarily merely as a surname. In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988). See TMEP §§1211.01(b)(i) et seq. for additional information about surnames combined with additional matter.

1211.01(b)(i) Double Surnames

A combination of two surnames is not primarily merely a surname, within the meaning of §2(e)(4), unless there is evidence of record showing that the combination would be perceived by the public primarily merely as a surname. See In re Standard Elektrik Lorenz A.G., 371 F.2d 870, 152 USPQ 563 (C.C.P.A. 1967) (SCHAUB-LORENZ held not primarily merely a surname, the Court noting that there was no evidence submitted that the mark sought to be registered was primarily merely a surname; that the only evidence of surname significance related to the individual "SCHAUB" and "LORENZ" portions of the mark; and that the mark must be considered in its entirety rather than dissected).

1211.01(b)(ii) Stylization or Design Elements

A mark comprised of a word that, standing by itself, would be considered primarily merely a surname, but which is coupled with a distinctive stylization or design element, is not considered primarily merely a surname. In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995) (stylized display of term BENTHIN found to be a factor weighing against a finding that the term would be perceived as primarily merely a surname). However, the addition of a nondistinctive design element or stylization to a term that, standing by itself, is primarily merely a surname does not remove the term from that category. The primary significance of the mark, in its entirety, would be merely that of a surname. See In re Pickett Hotel Co., 229 USPQ 760, 763 (TTAB 1986) (PICKETT SUITE HOTEL held primarily merely a surname despite the stylization of the lettering, which was considered "insignificant, in that it is clearly not so distinctive as to create any separate commercial impression in the minds of purchasers of appellant's services").

The display of a term in lower-case lettering does not detract from its surname significance. In re Directional Marketing Corp., 204 USPQ 675 (TTAB 1979).

1211.01(b)(iii) Surname Combined with Initials

The addition of initials to a term that, standing by itself, is primarily merely a surname does not remove the term from that category. In fact, the use of the first name initial followed by a surname has been held to reinforce, rather than diminish, the surname significance of a term. See In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A. 1953) (S. SEIDENBERG & CO'S. held primarily merely a surname); In re Nelson Souto Major Piquet, 5 USPQ2d 1367 (TTAB 1987) (N. PIQUET held primarily merely a surname); In re Taverniti, SARL, 225 USPQ 1263 (TTAB 1985), recon. denied 228 USPQ 975 (TTAB 1985) (J. TAVERNITI held primarily merely a surname); Ex parte Sears, Roebuck & Co., 87 USPQ 400 (PO Ex. Ch. 1950) (J.C. HIGGINS held primarily merely a surname).

1211.01(b)(iv) Surname Combined with Title

A title, such as "Mr.," "Mrs." or "Mlle.," does not diminish the surname significance of a term; rather, it may enhance the surname significance of a term. In re Revillon, 154 USPQ 494 (TTAB 1967) (MLLE. REVILLON held primarily merely a surname). Cf. In re Hilton Hotels Corp., 166 USPQ 216 (TTAB 1970) (LADY HILTON held not primarily merely a surname because it suggests a person or lady of nobility).

1211.01(b)(v) Surname in Plural or Possessive Form

The surname significance of a term is not diminished by the fact that the term is presented in its plural or possessive form. See In re Woolley's Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (WOOLLEY'S PETITE SUITES for hotel and motel services held primarily merely a surname); In re McDonald's Corp., 230 USPQ 304, 306 (TTAB 1986) (MCDONALD'S held primarily merely a surname based on a showing of surname significance of "McDonald," the Board noting that "it is clear that people use their surnames in possessive and plural forms to identify their businesses or trades"); In re Luis Caballero, S.A., 223 USPQ 355 (TTAB 1984) (BURDONS held primarily merely a surname based in part on telephone listings showing surname significance of "Burdon"); In re Directional Marketing Corp., 204 USPQ 675 (TTAB 1979) (DRUMMONDS held primarily merely a surname based on a showing of surname significance of "Drummond").

1211.01(b)(vi) Surname Combined with Wording

The treatment of marks that include wording in addition to a term that, standing by itself, is primarily merely a surname, depends on the significance of the non-surname wording.

If the wording combined with the surname is incapable of functioning as a mark (i.e., a generic name for the goods or services), the examining attorney should refuse registration on the ground that the entire mark is primarily merely a surname under §2(e)(4). If the policy were otherwise, one could evade §2(e)(4) by the easy expedient of adding the generic name of the goods or services to a word that is primarily merely a surname. In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993) (HAMILTON PHARMACEUTICALS for pharmaceutical products held primarily merely a surname); In re Cazes, 21 USPQ2d 1796, 1797 (TTAB 1991) (BRASSERIE LIPP held primarily merely a surname where "'brasserie' is a generic term for applicant's restaurant services"); In re Woolley's Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (WOOLLEY'S PETITE SUITES for hotel and motel services held primarily merely a surname); In re Possis Medical, Inc., 230 USPQ 72, 73 (TTAB 1986) (POSSIS PERFUSION CUP held primarily merely a surname, the Board finding that "[a]pplicant's argument that PERFUSION CUP is not a generic name for its goods ... is contradicted by the evidence the Examining Attorney has pointed to"); In re E. Martinoni Co., 189 USPQ 589, 590-91 (TTAB 1975) (LIQUORE MARTINONI (stylized) for liqueur held primarily merely a surname, with "liquore" being the Italian word for "liqueur").

If the wording combined with the surname is capable of functioning as a mark (i.e., matter that is arbitrary, suggestive or merely descriptive of the goods or services), the mark is not considered to be primarily merely a surname under §2(e)(4). However, if the additional wording is merely descriptive or the equivalent, and a disclaimer is otherwise proper, the examining attorney should require a disclaimer of the additional wording. See In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988) (HUTCHINSON TECHNOLOGY for computer components held not primarily merely a surname when the mark is considered as a whole, the Court remanding the case for entry of a disclaimer of "TECHNOLOGY" before publication).

1211.01(b)(vii) Surname Combined With Domain Name

A surname combined with a top-level domain name (e.g., JOHNSON.COM) is primarily merely a surname under §2(e)(4). See TMEP §1215.03.