1211.01(b)(iii) Surname Combined with Initials
In all cases involving a surname preceded by one or more initials, the factual record "matters most" when making findings regarding consumer perception. In re Colors in Optics, 2020 USPQ2d 53784, at *3 (TTAB 2020). 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 the surname Fitzpatrick would be perceived as a given name and comprised a personal name, not primarily merely a surname); see In re Yeley, 85 USPQ2d 1150, 1153 (TTAB 2007) (holding J.J. YELEY would be perceived as referencing a particular person, not primarily merely a surname, because J.J. Yeley was recognized as the full name of a well-known NASCAR race driver); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) (holding 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.").
Marks consisting of a single initial preceding a surname have been held to be primarily merely a surname. See In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 206, 98 USPQ 265, 267 (C.C.P.A. 1953); In re Colors in Optics, Ltd., 2020 USPQ2d 53784, at *4. However, the Board has noted that there is no per se rule that a single initial preceding a surname must be deemed primarily merely a surname. See In re Colors in Optics, 2020 USPQ2d 53784, at *4 (quoting In re Yeley, 85 USPQ2d at 1154). For example, a surname preceded by one initial may 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. See In re P.J. Fitzpatrick, 95 USPQ2d at 1413 (discussing In re I. Lewis Cigar, 205 F.2d at 206, 98 USPQ at 267). Thus, 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 be perceived as a personal name by the relevant consumers. See In re Colors in Optics, 2020 USPQ2d 53784, at *2-3. An applicant could show that such a mark is the name of a particular individual, such as the applicant or a signatory of the applicant, and provide evidence showing it would be recognized as such by the consuming public. See id. (holding J HUTTON primarily merely a surname rather than a personal name where no evidence was submitted to show Jade Hutton, an individual associated with applicant, went by or was known by J. Hutton and how the term was used, and she had signed a written consent Jade Hutton rather than J. Hutton). An applicant, however, must provide evidence that the mark would be perceived as a personal name by the relevant consumers, not argument alone. Id. at *4 (citing In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2007 (TTAB 2014)).
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). If the name in the mark is identical to the name of the applicant or to a signer of the application (e.g., the mark is A. JONES and the applicant’s name or signatory is A. Jones), written 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), 1206.04(b).