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. In re J.J. Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007) (citing In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985)). The burden then shifts to the applicant to rebut this showing. In re Colors in Optics, Ltd., 2020 USPQ2d 53784, at *3 (TTAB 2020) (citing In re Hutchinson Tech. Inc., 852 F.2d 552, 553-54, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)). Evidence submitted by an examining attorney has been found in some cases to be insufficient to establish a prima facie case. E.g., 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).
There is no rule as to the kind or amount of evidence necessary to make a prima facie showing that a term is primarily merely a surname. In re tapio GmbH, 2020 USPQ2d 11387, at *8 (TTAB 2020); In re Olin Corp., 124 USPQ2d 1327, 1330 (TTAB 2017). "This question must be resolved on a case-by-case basis." In re tapio, 2020 USPQ2d 11387, at *8, (citing In re Etablissements Darty et Fils, 759 F.2d at 17, 225 USPQ at 653); see In re Olin, 124 USPQ2d at 1330. The entire record is examined to determine the primary significance of a term. In re tapio, 2020 USPQ2d 11387, at *8; In re Olin, 124 USPQ2d at 1330. 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 at 17, 225 USPQ at 653.
See TMEP §§710–710.03 and 1211.02(b)–1211.02(b)(vii) for additional information about evidence.