1211.02    Evidence Relating to Surname Refusal

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.

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 or electronic databases are one type of credible evidence of the surname significance of a term. In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (evidence that more than 13,000 individuals in a number of locations throughout the U.S. bear the surname BARR establishes that it is a common enough surname that a substantial number of persons would be able to recognize its significance as a surname). 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. See, e.g., In re Petrin Corp., 231 USPQ 902, 903 (TTAB 1986) ; 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, foreign telephone directory listings are not probative of the significance of a term to the purchasing public in the United States, regardless of whether the applicant is of foreign origin. See, e.g., Société Civile Des Domaines Dourthe Frères v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1208 (TTAB 1988); In re Stromsholmens Mekaniska Verkstad AB, 228 USPQ 968, 969 (TTAB 1986); In re Wickuler-Kupper-Brauerei, 221 USPQ at 470 n.2.

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

Excerpted articles from the LexisNexis® research database are one type of credible evidence of the surname significance of a term. There is no requirement that the examining attorney make of record every story 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) ; 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.

An Office action that includes any evidence obtained from a research database should include a citation to the research service and a clear record of the specific search that was conducted, indicating the libraries or files that were searched and the date of the search (e.g., LexisNexis®, News and Business, All News, Aug. 5, 2007). The electronic record or printout summarizing the search should be made a part of the record. Relevant information not included on the summary, such as the number of documents viewed, should be stated in narrative in the Office action. See TMEP §710.01(a).

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

The Census Bureau ( http://www.census.gov/topics/population/genealogy/data/2010_surnames.html ) has a database of surnames taken from the most recent decennial census. The surnames 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, e.g., In re Weiss Watch Co., 123 USPQ2d 1200, 1203 (TTAB 2017) (highlighting Census burea data showing that "Weiss" ranks in the top 1000 of United States surnames).

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 In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Weiss Watch Co., 123 USPQ2d 1200, 1203 (TTAB 2017); In re Eximius Coffee, LLC 120 USPQ2d 1276, 1278-80 (TTAB 2016); In reIntegrated Embedded 120 USPQ2d 1504, 1507 (TTAB 2016); Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615, 1620-21 (TTAB 2013); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314, 1315 (TTAB 1990) ; In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988). 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 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 Adlon Brand GmbH & Co. KG,120 USPQ2d 1717, 1719, 1721 (TTAB 2016) (finding that evidence showing that the applied-for mark did not appear in dictionaries created a "strong inference" that the mark has no other non-surname meaning) 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 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).