BitLaw

1211.01    "Primarily Merely a Surname"

The test for determining whether a mark is primarily merely a surname depends on the primary significance of the mark as a whole to the purchasing public. In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988) see also In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (CCPA 1975); In re Adlon Brand GmbH & Co. KG,120 USPQ2d 1717, 1719 (TTAB 2016); In re Eximius Coffee, 120 USPQ2d 1276, 1277 (TTAB 2016). Thus, the impact the applied-for term has or would have on the purchasing public must be evaluated in determining whether the primary, and only, significance of the term is a surname significance. In re Eximius Coffee, 120 USPQ2d at 1278 (citing In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975) ).

Each case must be decided on its own facts, based upon the evidence in the record. See In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985). There is no rule regarding the kind or amount of evidence necessary to show that the applied-for mark would be perceived as primarily merely a surname. In re Eximius Coffee, 120 USPQ2d at 1278.

The Trademark Trial and Appeal Board has identified five examples of inquiries that may lead to evidence regarding the public’s perception of a term’s primary significance:

• (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)(iv));
• (3) whether the term has any recognized meaning other than as a surname (see TMEP §§1211.01(a)–1211.01(a)(vii));
• (4) whether it has the "structure and pronunciation" 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 Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995). Where the mark is in standard characters, it is unnecessary to consider the fifth factor. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007).

The Board has noted, however, that these factors are not exclusive. In re Eximius Coffee, 120 USPQ2d at 1278. Moreover, "any of these circumstances – singly or in combination – and any other relevant circumstances may shape the analysis in a particular case." Id.

If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant. In re Yeley, 85 USPQ2d at 1151; In re Benthin, 37 USPQ2d at 1334.