The Board affirmed a Section 2(e)(4) refusal to register the mark BARR GROUP for engineering, training, and expert witness services in the field of computer hardware and software [GROUP disclaimed], finding the mark to be primarily merely a surname. The evidence established that Michael Barr is an active participant in applicant’s activities and that consumers are exposed to his name on its website such that consumers are likely to view BARR as a surname. The Board also affirmed a Section 2(d) refusal in view of the registered mark BARR for overlapping and/or related services. In re Integrated Embedded, Serial No. 86140341 (September 27, 2016) [precedential].
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Primarily Merely a Surname: The Board observed that resolution of the Section 2(e)(4) issue "can be made only after the primary significance of the mark to the purchasing public is determined ...." In re Kahan & Weisz Jewelry Mfg. Corp., 184 USPQ 421, 422 (CCPA 1975). In In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) the Board identified several "factors" that may lead to pertinent evidence regarding that question.
Applicant's specimens of use (a press release and a screenshot from its website) referred to Michael Barr as a a leading expert in embedded systems and co-founder and Chief Technology Office of BARR GROUP, and it allowed website visitors to sign up for newsletters from Mr. Barr in the field of computer firmware. Visitors could also register to view an address by Mr. Barr and participate in a live chat with him. The website listed his qualifications and invited viewers to read his blog and his resume, and to follow him on social media.
Examining Attorney April Roach also submitted Lexis search results indicating that BARR appears as a surname 13,622 times in its telephone directory listings.
Thus, Mr. Barr is not a historical figure who founded Applicant in the distant past and of whom the public may not be aware. To the contrary, the record evidence establishes that Mr. Barr is an active participant in Applicant’s activities under its mark, and that consumers are exposed to his name in several locations on Applicant’s website such that consumers are likely to view BARR, as it appears in Applicant’s mark, as a surname.
The Lexis listings indicated that the surname BARR "is not so unusual that such significance would not be recognized by a substantial number of persons." Quoting Benthin at 1333.
The addition of the disclaimed term GROUP does not lend source-identifying significance to applicant's mark. Considered in its entirety in the context of applicant's services, BARR GROUP "does not engender a consumer perception beyond that of a surname."
Applicant submitted a number of third-party registrations for marks that applicant characterized as containing "the name BARR." It did not argue that BARR has any meaning other than as a surname. The Board observed that all of the registrations for marks consisting solely of BARR were registered with a claim of acquired distinctiveness if on the Principal Register, or were on the Supplemental Register. Those registered on the Principal Register without a Section 2(f) claim included the word BARR with additional wording and/or designs that resulted in marks that, as a whole, would not be perceived as primarily merely a surname. [E.g., JOHN BARR, BARR + BARR, BARR-NUNN & Design].
The Board concluded that consumers would perceive the mark BARR GROUP as primarily merely a surname, and so it affirmed the Section 2(e)(4) refusal.
Supplemental Register: A mark deemed to be primarily merely a surname is eligible for registration on the Supplemental Register upon a showing of acquired distinctiveness. Applicant was advised by the Examining Attorney that it could amend its application to seek registration on the Supplemental Register, but it did not do so; instead it stated that it "reserved the right" to so amend if the Section 2(e)(4) refusal were not withdrawn. The Examining Attorney acknowledged that statement but pointed out that, since no amendment was made, she would take no further action on proposed amendment.
The proper procedure would have been for applicant to amend its application to seek, in the alternative, registration on the Supplemental Register. The reservation of a supposed right to amend does not mean that applicant should now be afforded the opportunity to make the amendment in the event the Board affirms the surname refusal, by remanding the application to the Examining Attorney.
The precedents are clear that once the Board has rendered a final decision, a request to amend to the Supplemental Register is not possible. The application will not be reopened. And so the Board denied applicant's request to remand the application to the Examining Attorney for amendment to the Supplemental Register.
Likelihood of Confusion: The Board's analysis of the Section 2(d) issue was rather straightforward. Applicant argued that the third-party registrations show that BARR is weak and diluted, and therefore the cited registration (registered under Section 2(f)) is not entitled to a broad scope of protection. The Board, however, pointed out that third-party registrations do not show what happens in the marketplace or whether consumers are familiar with the marks.
Third-party registrations may show the sense in which a mark is used in ordinary parlance, but here the registrations cover a wide variety of goods and services, not those of the application or cited registration, and many of the registrations include additional wording and/or additional design elements that produce a different commercial impression from the marks involved here. [What do the additional elements have to do with the question of the meaning or sense of the word "barr"? - ed.].
Therefore, the third-party registration evidence did not show that the cited mark "is entitled to such a narrow scope of protection as to permit registration of a confusingly similar mark for related services."
Registrant's "engineering services" encompassed applicant's narrowly identified computer engineering services. Third-party website evidence established that all of applicant's services are related to those of registrant. The subject application and cited registration did not contain any limitation on channels of trade or classes of consumers. And finally, although applicant's clients may be highly experience and purchases of applicant's services may involve a deliberative decision, the Board pointed out once again that such purchasers are not immune from confusion as to source, especially when the involved services are in part legally identical and are offered under the same surname.
And so the Board affirmed the Section 2(d) refusal.
TTABlog comment: Note the Board's shift away from a mechanical Benthin approach to a more consumer-perception oriented approach. This case is one of eight separate Section 2(e)(4) affirmances issued by the Board in the last week of September.