1211.02(b)    Evidentiary Considerations

In appropriate cases, the examining attorney may present evidence that may appear contrary to his or her position, with an appropriate explanation as to why, in view of other evidence presented, this evidence was not considered controlling. In some cases, this may foreclose objections from an applicant and present a more complete picture in the event of an appeal.

See TMEP §§1211.02(b)(i)–1211.02(b)(vii) regarding types of evidence that may be relevant to a refusal of registration under §2(e)(4).

1211.02(b)(i)    Telephone Directory Listings

Telephone directory listings from telephone books and similar electronic databases, such as the LexisNexis® surname database (which is a regularly updated nationwide directory of mobile phone numbers and other numbers, and the names with which they are associated) are a type of evidence of the surname significance of a term. See In re tapio GmbH, 2020 USPQ2d 11387, at *9 (TTAB 2020) (finding evidence from the LexisNexis® surname database and whitepages.com database probative to show surname significance); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (finding evidence from the LexisNexis® surname database probative to show surname significance); In re Petrin Corp., 231 USPQ 902, 903 (TTAB 1986) (finding evidence from telephone directories and the LexisNexis® research database probative to show surname significance). The Trademark Trial and Appeal Board has declined to hold that a minimum number of listings in telephone directories must be found to establish a prima facie showing that the mark is primarily merely a surname. In re Petrin Corp., 231 USPQ 902,at 903 (TTAB 1986); (citing In re Wickuler-Kupper-Brauerei KGaA, 221 USPQ 469, 470 (TTAB 1983)).

It is the American public’s perception of a term that is determinative. Therefore, telephone directory listings from foreign sources are generally of little probative value unless they are shown to be accessible and relevant to the purchasing public in the United States, regardless of whether the applicant is of foreign origin. In re tapio, 2020 USPQ2d 11387, at *9 n.31 (citing In re Wickuler-Kupper-Brauerei, 221 USPQ at 470 n.2); See Société Civile Des Domaines Dourthe Frères v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1208 (TTAB 1988).

See TMEP §710.01(a) regarding the requirements for providing evidence from research databases in Office actions and §1211.02(b)(ii) regarding providing evidence from the LexisNexis® research database for surname significance.

1211.02(b)(ii)    LexisNexis® Research Database Evidence

Excerpted newspaper, magazine, and newswire articles from the LexisNexis® research database are one type of evidence of the surname significance of a term. See In re Petrin Corp., 231 USPQ 902, 903 (TTAB 1986). There is no requirement that the examining attorney make of record every article found in a LexisNexis® search. However, the examining attorney is presumed to make the best case possible. See In re Federated Dep't Stores Inc., 3 USPQ2d 1541, 1542 n.2 (TTAB 1987) ; see also In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071 (TTAB 1989) ("We must conclude that, because the Examining Attorney is presumed to have made the best case possible, the 46 stories not made of record [the search yielded 48 stories] do not support the position that CALISTO is a surname and, indeed, show that CALISTO has non surname meanings.") See TMEP §710.01(b) regarding evidence originating in foreign publications.

Examining attorneys may also show surname significance by providing evidence of the total number of occurrences of a particular surname in the LexisNexis® surname database, which is a regularly updated nationwide directory of mobile phone numbers and other numbers (such VOIP numbers) and the names with which they are associated. See TMEP §710.01(a) regarding the requirements for providing evidence from research databases in Office actions and §1211.02(b)(i) regarding providing evidence from telephone directory databases for surname significance.

1211.02(b)(iii)    U.S. Census Database Evidence

The U.S. Census Bureau’s database of surnames, (https://www.census.gov/topics/population/genealogy/data/2010_surnames.html ), which is taken from the most recent decennial census, is one type of evidence of the surname significance of a term. See, e.g., In re Olin Corp., 124 USPQ2d 1327, 1331 (TTAB 2017); In re Weiss Watch Co., 123 USPQ2d 1200, 1203 (TTAB 2017). The surnames in this database are ordered by rank, and the database lists the number of individuals in the country having each surname. Because the database reflects the number of individuals, rather than the number of households, with a particular name, search results from this database may be more persuasive evidence of surname frequency than results from telephone directory listings. See TMEP §710.01(a) regarding the requirements for providing evidence from research databases in Office actions, and §1211.02(b)(i) regarding providing evidence from telephone directory databases for surname significance.

1211.02(b)(iv)    Surname of Person Associated with Applicant

The fact that a term is the surname of an individual associated with the applicant (e.g., an officer or founder) is evidence of the surname significance of the term. See, e.g., In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Colors in Optics, Ltd., 2020 USPQ2d 53784, at *3 (TTAB 2020); In re Olin Corp., 124 USPQ2d 1327, 1332 (TTAB 2017); In re Weiss Watch Co., 123 USPQ2d 1200, 1203 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-80 (TTAB 2016). However, the lack of such an association does not necessarily reduce the likelihood that the mark would be perceived as a surname. See In re Six Continents Ltd., 2022 USPQ2d 135, at *11 (TTAB 2022); In re tapio GmbH, 2020 USPQ2d 11387, at *11 (TTAB 2020); In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004); In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1724 (TTAB 2016).

1211.02(b)(v)    Specimens Confirming Surname Significance of Term

The fact that a term appears on the specimen of record in a manner that confirms its surname significance is evidence of the surname significance of a term. See In re Integrated Embedded, 120 USPQ2d 1504, 1510 (TTAB 2016) (holding BARR GROUP primarily merely a surname, noting evidence that applicant’s co-founder, Michael Barr, is prominently featured on specimens, which also indicate that applicant derived its name from him); In re Eximius Coffee, LLC 120 USPQ2d 1276, 1279 (TTAB 2016) (holding ALDECOA primarily merely a surname, noting applicant’s presentation of the mark with the phrase "Premium Family Coffee" on packaging for the goods); Société Civile Des Domaines Dourthe Frères v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1208 (TTAB 1988) (holding DOURTHE primarily merely a surname, the Board noted applicant’s references to "Dourthe" as the name of a particular family and found the surname significance of the term to be reinforced by the appearance on applicant’s wine labels of the name and/or signature of an individual named Pierre Dourthe); In re Taverniti, SARL,225 USPQ 1263, 1264 (TTAB 1985), recon. denied, 228 USPQ 975 (TTAB 1985) (holding J. TAVERNITI primarily merely a surname, the Board considered, among other factors, the presentation of the mark on the specimen in signature form); In re Luis Caballero, S.A., 223 USPQ 355, 356-57 (TTAB 1984) (holding BURDONS primarily merely a surname, the Board weighted heavily the applicant’s use of "Burdon" on the specimen as a surname, albeit of a fictitious character ("John William Burdon")).

1211.02(b)(vi)    Negative Dictionary Evidence

Negative dictionary evidence (i.e., evidence that a term is absent from dictionaries or atlases) may demonstrate the lack of non-surname significance of a term. In re Six Continents Ltd., 2022 USPQ2d 135, at *10-11 (TTAB 2022) ("The evidence that 'Atwell' has no other recognized meaning supports finding that 'Atwell' is primarily merely a surname."); In re Olin Corp., 124 USPQ2d 1327, 1331 (TTAB 2017) (finding, in the absence of any countervailing evidence, that negative dictionary evidence established that OLIN has no recognized meaning other than as a surname); In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1719-20 (TTAB 2016)) (finding negative dictionary evidence supported that ADLON had no meaning other than as a surname); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016) ("The evidence that ALDECOA has no other recognized meaning further supports the Examining Attorney’s case that its primary significance is as a surname.").

1211.02(b)(vii)    Evidence of Fame of a Mark

Evidence of the fame of a mark (e.g., evidence of consumer recognition of a mark, or expenditures made in promoting or advertising a mark) is not relevant unless registration is sought under §2(f). In re McDonald’s Corp., 230 USPQ 304, 307 (TTAB 1986) (holding McDonald’s primarily merely a surname in spite of strong secondary meaning, with the Board stating that "the word ‘primarily’ refers to the primary significance of the term, that is, the ordinary meaning of the word, and not to the term’s strength as a trademark due to widespread advertising and promotion of the term as a mark to identify goods and/or services."); see also In re Olin Corp., 124 USPQ2d 1327, 1329 (TTAB 2017); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1565 (TTAB 1988); In re Nelson Souto Major Piquet, 5 USPQ2d 1367, 1368 (TTAB 1987).