In a non-precedential opinion, The Trademark Trial and Appeal Board (“TTAB”) reversed the Patent and Trademark Office’s (“PTO”) refusal to register the mark ROMANÓV.
The applicant sought registration of the mark ROMANÓV for decorative eggs, picture frames, porcelain boxes, jewelry, and table clocks. The Examining Attorney refused registration on the grounds that the mark is “primarily merely a surname.”
Under the Trademark Act, a mark cannot be registered if it is “primarily merely a surname” unless the applicant demonstrates acquired distinctiveness.
In reviewing the PTO’s refusal, the Board examined the rareness of the surname, whether anyone connected to the applicant bears the surname, whether the mark has significance other than as a surname, and whether the mark looks or sounds like a surname. After considering these factors, the Board found that the PTO had failed to establish that ROMANÓV was “primarily merely a surname”.
The PTO relied upon a search of a directory website that revealed “100+ Results” for “Romanóv.” The Board found this to be insufficient proof that the name is common because “100+” is an inconclusive indicator of the rareness of the surname. There could be thousands of persons having the surname or just over 100 persons. Because it was the Examining Attorney’s burden to demonstrate the commonness of the surname, the Board gave the applicant the benefit of the doubt and assumed that Romanóv was a rare surname. Thus, the public is less likely to consider its significance as a surname when encountering ROMANÓV. The Board also considered that no one connected with the applicant bears that surname.
The applicant argued that the name has recognizable historical significance, because it is the surname of the dynasty that ruled Russia from 1613 to 1917. The PTO found that “Romanóv” has no significance other than a surname because it has no dictionary meaning and multiple members of the House of Romanóv (such as Peter the Great and Catherine the Great) held that surname. Because the applicant’s goods (decorative eggs and jewelry) are items associated with the Romanóv dynasty, the Board found that consumers encountering the mark are more likely to think of the dynasty and not individuals bearing the surname. Thus, the applicant’s mark ROMANÓV is not “primarily merely a surname.”
In re The Hyman Companies Inc., Serial No. 85483695 (TTAB June 4, 2014) [not precedential].