As a result of various third-party uses of the surname “Ayoub” for similar services, Applicant’s use of AYOUB did not meet the requirement of Section (f) that use be “substantially exclusive.”
Applicant operated a rug and carpet cleaning and repair business in the Washington D.C. metropolitan area under the name ACS Ayoub Carpet Service. Applicant filed an application to register the mark AYOUB, claiming use of the mark since 1952. The application was initially rejected on the basis the mark was primarily merely a surname, but was approved following Applicant’s amendment to seek registration under Section 2(f) of the Trademark Act based on Applicant’s claim that the mark had acquired distinctiveness.
Opposers Ayoub, Inc and Ayoub Supply opposed registration of the mark on the basis that the proposed mark is merely a surname that has not acquired distinctiveness.
All parties to the opposition acknowledged that AYOUB is primarily a surname and that the only issue in the opposition is whether the AYOUB surname had acquired distinctiveness for the relevant services. Registration based on acquired distinctiveness under Section 2(f) requires “substantially exclusive and continuous use” of the mark in commerce for at least five years immediately before the date of the claim of acquired distinctiveness.
Applicant submitted evidence to show its use of the mark, including advertising in telephone directories, testimony as to sales revenue and advertising expenditures, and policing efforts against third-party uses of “Ayoub” for similar services. Some of those third parties agreed to discontinue use of the Ayoub name, but others continued use with additional terms (such as “George Ayoub Carpet & Rug Care”) in an effort to avoid consumer confusion. In fact, Applicant and the Opposers were involved in litigation which was resolved when the parties agreed Opposers could use the name Ayoub if always used in combination with the term “N&H.”
Opposers argued that “Ayoub” is a prominent surname in the rug and carpet cleaning and repair business in the Washington D.C. area. In support, Opposers submitted evidence of seven other rug and carpet cleaning businesses unrelated to Applicant that have used the surname Ayoub for decades in the Washington D.C. metropolitan area for services similar to those provided by Applicant.
The evidence showed use of the surname Ayoub by various third parties that are, or were, in the same business as Applicant and who were using the name Ayoub at least some of the time during which Applicant claimed substantially exclusive use. The evidence also showed that Applicant knew its use of AYOUB was not substantially exclusive, because Applicant had placed a notice on its website to clarify that the owners of Ayoub-owned businesses in the Washington D.C. metropolitan area are wholly separate unaffiliated business entities. Applicant’s notice went so far as to say:
Some of you might be confused of (sic) the various “Ayoub” entities serving the Washington DC metro are in the cleaning and flooring business. Although we are all related and do a good job, we each run our business separately and uniquely apart from one another.
The Board ruled that Applicant had not demonstrated that AYOUB has acquired distinctiveness due to a lack of substantially exclusive use. While absolute exclusivity is not required, widespread use of the surname Ayoub by unaffiliated businesses offering the same services is inconsistent with a claim of acquired distinctiveness.
Ayoub, Inc. and Ayoub Supply LLC v. ACS Ayoub Carpet Service, Opposition No. 91211014 (TTAB March 31, 2016) [precedential].