TMEP 1211.01(a)(v): Rare Surnames

October 2017 Edition of the TMEP

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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 Joint-Stock Co. "Baik," 84 USPQ2d 1921, 1924 (TTAB 2007) (finding the extreme rarity of BAIK weighed against surname refusal); In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333 (TTAB 1995) (finding the fact that BENTHIN was a rare surname 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, 1381 (TTAB 1994) (finding 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) (holding GARAN 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) (holding DARTY primarily merely a surname); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990) (holding REBO primarily merely a surname); In re Pohang Iron & Steel Co., 230 USPQ 79 (TTAB 1986) (holding POSTEN 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. See In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1721 (TTAB 2016); ("The issue to be determined under the statute is whether the public would perceive the surname significance as the proposed mark's primary significance, not whether the surname is rarely encountered.").

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. In re Bed & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017) ("[A]lthough BELUSHI is a rare surname in terms of the number of people in the U.S. with that name, it is anything but rare when we consider how many consumers have been exposed to it as a surname, often repeatedly, over the years"). 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, 1795 (TTAB 2004); cf. In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1281 (TTAB 2016).