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

October 2017 Edition of the TMEP

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1211.01(b)(vi)    Surname Combined with Additional Wording

When a mark is comprised of a term that, standing by itself, is primarily merely a surname, combined with additional wording, the distinctiveness of the additional wording is relevant to determining whether the primary significance of the mark as a whole is that of a surname. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1415 (Fed. Cir. 2017). The inquiry is not limited only to the question of whether the additional matter is capable of functioning as a mark. Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1482 n.9 (TTAB 2017) (construing In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492-93 (Fed. Cir. 1988). The additional term(s) must be evaluated to determine whether they are generic or merely descriptive. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1415 (Fed. Cir. 2017). In addition, the meaning of the mark as a whole must be assessed to determine whether adding the additional term to the surname alters the primary significance of the mark as a whole. Id. (remanding to the Board to determine both whether the term COLLECTION in the mark EARNHARDT COLLECTION is merely descriptive and the primary significance of the mark as a whole to the purchasing public).

Merely descriptive terms that have not acquired distinctiveness do not have source-identifying significance and—like generic terms—when added to a surname will typically not alter the primary surname significance of the mark as a whole. Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477 at n.9 (holding AZEKA’S RIBS for barbecue sauce primarily merely a surname). See TMEP §1209.01(b) regarding merely descriptive marks and TMEP §1209.01(c) regarding generic terms. If the policy were otherwise, one could evade §2(e)(4) by the easy expedient of adding merely descriptive matter or the generic name of the goods or services to a word that is primarily merely a surname. See In re Weiss Watch Co., 123 USPQ2d 1200 (TTAB 2017) (holding WEISS WATCH COMPANY for clocks, watches, and related goods primarily merely a surname); In re Integrated Embedded, 120 USPQ2d 1504, (holding BARR GROUP for training, engineering, and expert witness services in the field of computer hardware and software primarily merely a surname); 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 structure of the mark is "surname + additional wording" and none of the additional wording is inherently distinctive or has acquired distinctiveness, refusal of the entire mark under §2(e)(4) will be appropriate in most circumstances. Note that when the wording following the surname is geographic in nature, the wording should be assessed for whether standing alone it would be considered geographically descriptive or geographically deceptively misdescriptive of the applied-for goods or services. For example, if the geographic meaning of the additional term is obscure, then its addition to a surname would normally result in a combination that does not have the primary significance of a surname and the mark as a whole would not be considered to be primarily merely a surname under §2(e)(4).

If the wording combined with the surname is inherently distinctive (i.e., matter that is fanciful, arbitrary, or suggestive), the mark is not considered to be primarily merely a surname under §2(e)(4).

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.