T.M.E.P. § 1211.02
Evidence Relating to Surname Refusal
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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1211.02 Evidence Relating to Surname Refusal
1211.02(a) Evidentiary Burden - Generally
The burden is initially on the examining attorney to establish a prima facie case that a mark is primarily merely a surname. The burden then shifts to the applicant to rebut this showing. In re Petrin Corp., 231 USPQ 902 (TTAB 1986). The evidence submitted by the examining attorney was found insufficient to establish a prima facie case in the following decisions: In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975); In re BDH Two Inc., 26 USPQ2d 1556 (TTAB 1993); In re Raivico, 9 USPQ2d 2006 (TTAB 1988); In re Garan Inc., 3 USPQ2d 1537 (TTAB 1987).
There is no rule as to the kind or amount of evidence necessary to make out a prima facie showing that a term is primarily merely a surname. This question must be resolved on a case-by-case basis. See, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., Ltd., 230 USPQ 79 (TTAB 1986). The entire record is examined to determine the surname significance of a term. The following are examples of evidence that may be relevant: telephone directory listings; excerpted articles from computerized research databases; evidence in the record that the term is a surname; the manner of use on specimens; dictionary definitions of the term and evidence from dictionaries showing no definition of the term. The quantum of evidence that is persuasive in finding surname significance in one case may be insufficient in another because of the differences in the names themselves. See In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985).
See TMEP §§710 et seq. and 1211.02(b) et seq. for additional information about evidence.
1211.02(b) Evidentiary Considerations
In appropriate cases, the examining attorney may present evidence that may appear contrary to his or her position, with an appropriate explanation as to why, in view of other evidence presented, this evidence was not considered controlling. In some cases, this may foreclose objections from an applicant and present a more complete picture in the event of an appeal.
See TMEP §§1211.02(b)(i) et seq. regarding types of evidence that may be relevant to a refusal of registration under §2(e)(4).
1211.02(b)(i) Telephone Directory Listings
Telephone directory listings from telephone books or electronic databases are one type of credible evidence of the surname significance of a term. The Trademark Trial and Appeal Board has declined to hold that a minimum number of listings in telephone directories must be found to establish a prima facie showing that the mark is primarily merely a surname. See, e.g., In re Petrin Corp., 231 USPQ 902 (TTAB 1986); In re Wickuler-Kupper-Brauerei KGaA, 221 USPQ 469 (TTAB 1983).
It is the American public's perception of a term that is determinative. Therefore, foreign telephone directory listings are not probative of the significance of a term to the purchasing public in the United States, regardless of whether the applicant is of foreign origin. See, e.g., Sociˇtˇ Civile Des Domaines Dourthe Fr¸res v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205 (TTAB 1988); In re Stromsholmens Mekaniska Verkstad AB, 228 USPQ 968 (TTAB 1986); In re Wickuler-Kupper-Brauerei, supra.
1211.02(b)(ii) LEXIS-NEXIS(r) Research Database Evidence
Excerpted articles from the LEXIS-NEXIS(r) research database are one type of credible evidence of the surname significance of a term. There is no requirement that the examining attorney make of record every story found in a LEXIS-NEXIS(r) search. However, the examining attorney is presumed to make the best case possible. See In re Federated Department Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987). See also In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071 (TTAB 1989) ("We must conclude that, because the Examining Attorney is presumed to have made the best case possible, the 46 stories not made of record [the search yielded 48 stories] do not support the position that CALISTO is a surname and, indeed, show that CALISTO has non surname meanings.") An Office action that includes any evidence obtained from a research data base should include a citation to the research service and a clear record of the specific search that was conducted, indicating the libraries or files that were searched and the date of the search (e.g., LEXIS(r), New and Business, All News, Jan. 5, 2005). The electronic record or printout summarizing the search should be made a part of the record. Relevant information not included on the summary, such as the number of documents viewed, should be stated in narrative in the Office action. See TMEP §710.01(a).
Since it is the American public's perception of a term that is determinative, evidence from foreign publications is given little or no weight. See In re BDH Two Inc., 26 USPQ2d 1556 (TTAB 1993).
1211.02(b)(iii) Surname of Person Associated with Applicant
The fact that a term is the surname of an individual associated with the applicant (e.g., an officer or founder) is evidence of the surname significance of the term. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988), aff'd, 883 F.2d 1026 (Fed. Cir. 1989); In re Taverniti, SARL, 225 USPQ 1263 (TTAB 1985), recon. denied, 228 USPQ 975 (TTAB 1985).
1211.02(b)(iv) Specimens Confirming Surname Significance of Term
The fact that a term appears on the specimens of record in a manner that confirms its surname significance is evidence of the surname significance of a term. See Sociˇtˇ Civile Des Domaines Dourthe Fr¸res v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1208 (TTAB 1988) (DOURTHE found primarily merely a surname, the Board noting applicant's references to "Dourthe" as the name of a particular family and finding the surname significance of the term to be reinforced by the appearance on applicant's wine labels of the name and/or signature of an individual named Pierre Dourthe); In re Taverniti, SARL, 225 USPQ 1263, 1264 (TTAB 1985), recon. denied, 228 USPQ 975 (TTAB 1985) (J. TAVERNITI held primarily merely a surname, the Board considering, among other factors, the presentation of the mark on the specimens in signature form); In re Luis Caballero, S.A., 223 USPQ 355, 356-57 (TTAB 1984) (BURDONS held primarily merely a surname, the Board weighting heavily the applicant's use of "Burdon" on the specimens as a surname, albeit of a fictitious character ("John William Burdon")).
1211.02(b)(v) Negative Dictionary Evidence
Negative dictionary evidence (i.e. evidence that a term is absent from dictionaries or atlases) may demonstrate the lack of non-surname significance of a term. See In re Petrin Corp., 231 USPQ 902 (TTAB 1986).
1211.02(b)(vi) Evidence of Fame of a Mark
Evidence of the fame of a mark (e.g., evidence of consumer recognition of a mark, or expenditures made in promoting or advertising a mark) is not relevant unless registration is sought under §2(f). In re McDonald's Corp., 230 USPQ 304, 307 (TTAB 1986) (McDONALD'S held primarily merely a surname in spite of strong secondary meaning, with the Board stating that. "the word 'primarily' refers to the primary significance of the term, that is, the ordinary meaning of the word, and not to the term's strength as a trademark due to widespread advertising and promotion of the term as a mark to identify goods and/or services.") See also In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988), aff'd, 883 F.2d 1026 (Fed. Cir. 1989); In re Nelson Souto Major Piquet, 5 USPQ2d 1367 (TTAB 1987).