TMEP 1211.01(b)(iii): Surname Combined with Initials

October 2017 Edition of the TMEP

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1211.01(b)(iii)    Surname Combined with Initials

A mark that consists of two or more initials preceding a surname will typically convey the commercial impression of a personal name and thus generally will not be primarily merely a surname. In re P.J. Fitzpatrick, 95 USPQ2d 1412, 1414 (TTAB 2010) (holding that the initials P.J. coupled with surname Fitzpatrick would be perceived as a given name and thus comprises an entire personal name, not merely a surname); see In re Yeley, 85 USPQ2d 1150, 1153 (TTAB 2007) (holding that the proposed mark J.J. YELEY was recognized as the full name of the well known NASCAR race driver and as such was perceived as a reference to a particular person and not primarily merely a surname); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) (finding that the primary significance of M.C. ESCHER was that of a famous deceased Dutch artist, commenting that "[t]he mark M.C. ESCHER would no more be perceived as primarily merely a surname than the personal names P.T. Barnum, T.S. Eliot, O.J. Simpson, I.M. Pei and Y.A. Tittle.").

Although marks consisting of a single initial preceding a surname have been held to be primarily merely a surname, In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A. 1953), the Board has noted that no per se rule exists that a single initial preceding a surname must be deemed primarily merely a surname. P.J. Fitzpatrick, 95 USPQ2d at 1413. The Board further opined that such a mark would not be perceived as primarily merely a surname where the record shows that the addition of a single initial to a surname creates the commercial impression of a personal name. Id. Therefore, applicants may attempt to overcome a surname refusal as to a mark consisting of a single initial preceding a surname by submitting evidence that the mark would likely be perceived as a personal name. For example, an applicant may provide evidence that consumers in general perceive a single initial preceding a surname as a personal name. Or, an applicant may show that such a mark is the name of an individual, such as the applicant or a signatory of the applicant, and evidence shows it would be recognized as such by the consuming public. In addition, if the applicant indicates that the name in the mark is that of a particular living individual, the applicant must provide written consent to register the mark from this individual. See TMEP §§813, 813.01(a), 1206.04(a). However, when the name in the mark is identical to the name of the applicant or of a signer of the application (e.g., the mark is A. JONES and the applicant’s name or signatory is A. Jones), consent is not necessary. In such cases, consent is presumed, but the examining attorney must ensure that a consent statement is entered into the Trademark database. See TMEP §§813, 813.01(a), and 1206.04(b).