TMEP 1211.02(a): Evidentiary Burden – Generally

This is the October 2015 Edition of the TMEP

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1211.02(a)    Evidentiary Burden – Generally

The burden is initially on the examining attorney to establish a prima facie case that a mark is primarily merely a surname. The burden then shifts to the applicant to rebut this showing. In re Petrin Corp., 231 USPQ 902, 902-03 (TTAB 1986). The evidence submitted by the examining attorney was found insufficient to establish a prima facie case in the following decisions: In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 833, 184 USPQ 421, 422 (C.C.P.A. 1975) (finding six telephone directory listings insufficient to establish a prima facie case); In re BDH Two Inc., 26 USPQ2d 1556, 1558 (TTAB 1993) (finding twenty-one telephone directory listings, eleven excerpts from a research database, primarily from foreign publications, and a dictionary page showing no listing for the proposed mark insufficient to establish a prima facie case); In re Raivico, 9 USPQ2d 2006, 2006-07 (TTAB 1988) (finding applicant’s statement that the mark is a surname and the specimens insufficient to establish a prima facie case); In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987) (finding six telephone directory listings, a reference in a television news program, and a dictionary page showing no listing for the proposed mark insufficient to establish a prima facie case).

There is no rule as to the kind or amount of evidence necessary to make out a prima facie showing that a term is primarily merely a surname. This question must be resolved on a case-by-case basis. See, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., 230 USPQ 79 (TTAB 1986). The entire record is examined to determine the surname significance of a term. The following are examples of evidence that may be relevant: telephone directory listings; excerpted articles from computerized research databases; evidence in the record that the term is a surname; the manner of use on the specimen; dictionary definitions of the term and evidence from dictionaries showing no definition of the term. The quantum of evidence that is persuasive in finding surname significance in one case may be insufficient in another because of the differences in the names themselves. See In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985).

See TMEP §§710–710.03 and 1211.02(b)–1211.02(b)(vii) for additional information about evidence.