TMEP 1211.01(a)(vi): "Structure and Pronunciation" of a Surname

October 2017 Edition of the TMEP

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1211.01(a)(vi)    "Structure and Pronunciation" of a Surname

Some names, by their very nature, have only surname significance even though they are rare surnames. See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) (holding PIRELLI primarily merely a surname, the Board stated 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) (holding PETRIN primarily merely a surname). Conversely, certain surnames are so rare that they do not even have the appearance of surnames. In such cases, even in the absence of non-surname significance, a reasonable application of the "primary significance to the purchasing public" test could result in a finding that the surname, when used as a mark, would be perceived as arbitrary or fanciful. In re United Distillers plc, 56 USPQ2d 1220, 1222 (TTAB 2000) (finding HACKLER does not have the look and feel of a surname); see also In re Joint-Stock Co. "Baik," 84 USPQ2d 1921, 1923 (TTAB 2007) (finding lack of other recognized meaning does not in itself imbue a mark with the "look and feel" of a surname).

Examining attorneys may submit evidence that the public would perceive a term to have surname significance due to its structure or pronunciation. In re Eximius Coffee, 120 USPQ2d 1276, 1280 (TTAB 2016). For example, the examining attorney may compare the mark at issue to other terms with the same structure. In such cases, the examining attorney must provide evidence to show that the public would be likely to perceive the mark as a surname due to the similar structure, such as evidence that the terms to which the mark is being compared are common surnames to which the public has been exposed. Id.; see also In re Bed & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017) (Board noting that it would require evidence bearing on how members of the public would perceive the structure and sound of BELUSHI and whether they would be likely to perceive the proposed mark as similar or dissimilar in structure and sound to other surnames, common words, or coined terms); In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1724 (TTAB 2016) (noting that "[t]he mere sharing of a prefix, suffix or letter string does not result in the sort of structural similarity that is helpful to [the surname] analysis" and that arguments about surname structure and pronunciation "would require more objective evidence... of how members of the public would perceive the structure and sound of [the applied-for mark] and whether they would be likely to perceive it as similar to the structure and sound of other surnames, common words or coined terms").