TMEP 1211.01(b)(vi): Surname Combined with Wording

This is the October 2015 Edition of the TMEP

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1211.01(b)(vi)    Surname Combined with Wording

The treatment of marks that include wording in addition to a term that, standing by itself, is primarily merely a surname, depends on the significance of the non-surname wording.

If the wording combined with the surname is incapable of functioning as a mark (i.e., a generic name for the goods or services), the examining attorney must refuse registration on the ground that the entire mark is primarily merely a surname under §2(e)(4). If the policy were otherwise, one could evade §2(e)(4) by the easy expedient of adding the generic name of the goods or services to a word that is primarily merely a surname. See Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615 (TTAB 2013) (holding MILLER LAW GROUP for legal services primarily merely a surname); In re Hamilton Pharm. Ltd., 27 USPQ2d 1939 (TTAB 1993) (holding HAMILTON PHARMACEUTICALS for pharmaceutical products primarily merely a surname); In re Cazes, 21 USPQ2d 1796, 1797 (TTAB 1991) (holding BRASSERIE LIPP primarily merely a surname where “‘brasserie’ is a generic term for applicant’s restaurant services”); In re Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (holding WOOLLEY’S PETITE SUITES for hotel and motel services primarily merely a surname); In re Possis Med., Inc., 230 USPQ 72, 73 (TTAB 1986) (holding POSSIS PERFUSION CUP primarily merely a surname, the Board finding that “[a]pplicant’s argument that PERFUSION CUP is not a generic name for its goods... is contradicted by the evidence the Examining Attorney has pointed to”); In re E. Martinoni Co., 189 USPQ 589, 590-91 (TTAB 1975) (holding LIQUORE MARTINONI (stylized) for liqueur primarily merely a surname, with “liquore” being the Italian word for “liqueur”).

If the wording combined with the surname is capable of functioning as a mark (i.e., matter that is arbitrary, suggestive, or merely descriptive of the goods or services), the mark is not considered to be primarily merely a surname under §2(e)(4). However, if the additional wording is merely descriptive or the equivalent, and a disclaimer is otherwise proper, the examining attorney must require a disclaimer of the additional wording. See In re Hutchinson Tech. Inc., 852 F.2d 552, 555, 7 USPQ2d 1490, 1493 (Fed. Cir. 1988) (holding HUTCHINSON TECHNOLOGY for computer components not primarily merely a surname when the mark is considered as a whole, the Court remanding the case for entry of a disclaimer of “TECHNOLOGY” before publication).

Some wording may enhance rather than diminish the surname significance of the mark. See In re Piano Factory Grp. Inc., 85 USPQ2d 1522, 1527 (TTAB 2006) (finding the addition of “& SONS” to the surname VOSE “serves only to emphasize or reinforce that ‘VOSE’ is the surname of the sons’ parents.”), and cases cited therein. See also TMEP §1211.01(b)(iv) regarding surnames combined with titles, TMEP §1211.01(b)(iii) regarding surnames combined with initials, and TMEP §1211.01(b)(viii) regarding surnames combined with legal or familial business entity designations.