Barr. Aldecoa. Hechter. Adlon. Kepler. Butterfields. What do these words have in common, you may ask? They were all recently found to be "primarily merely a surname," and refused registration by the Trademark Trial and Appeal Board ("TTAB" or the "Board"). In a spate of recent decisions (some precedential) on this tricky topic, the Board appears to be emphasizing the importance of consumer perception over the relative rarity of a particular surname.
Under Section 2(e)(4) of the Lanham Act, a mark that is primarily merely a surname is not registrable on the Principal Register, barring a showing of acquired distinctiveness under Section 2(f). The Board typically looks to its four Benthin factors in determining whether a mark’s primary significance to the public is as a surname: (1) whether the surname is rare; (2) whether anyone connected with the owner of the mark has the involved surname; (3) whether the term has any other recognized meaning; and (4) whether the term has the "look and feel" of a surname. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332 (TTAB 1995). Evidence put forth in support of a surname refusal typically includes telephone directory listings, research database evidence, U.S. census database evidence, a showing that the subject surname is associated with the applicant, and specimens pointing to the surname significance of the mark.
The Board was very busy with Section 2(e)(4) decisions during the final quarter of 2016, releasing seven on this topic - six of which affirmed the refusal to register, while just one overturned the refusal to allow registration. Interestingly, three of the decisions were deemed precedential, a label that the TTAB applies to decisions it views as significant contributions to its body of law and/or of widespread legal interest.
The TTAB affirmed the refusal to register the following marks as primarily merely surnames: (1) BARR GROUP for engineering, training, and expert witness services in the field of computer hardware and software, In re Integrated Embedded, 120 USPQ2d 1504 (TTAB 2016) [precedential]; (2) ALDECOA for coffee, In re Eximius Coffee, LLC, 120 USPQ 2d 1276 (TTAB 2016) [precedential]; (3) HECHTER for leather goods and clothing, In re Aulback Lizenz AG, Serial No. 79156860 (Nov. 7, 2016); (4) ADLON for hospitality industry and related goods and services, In re Adlon Brand GmbH & Co. KG c/o FUNDUS FONDS-Verwaltungen GmbH, 120 USPQ2d 1717 (TTAB 2016) [precedential]; (5) KEPLER for a variety of entertainment products related to a Swedish detective book series, In re Bonnierforlagen Aktiebolagi, Serial No. 86292577 (Dec. 27, 2016); and (6) BUTTERFIELDS for auction and appraisal services, In re Bonhams & Butterfields Auctioneers Corp., Serial Nos. 85443480 & 85443485 (Dec. 29, 2016). Rather than mechanically applying the Benthin factors in these decisions, the Board emphasized whether consumers would perceive the mark in question as a surname.
The first Benthin factor, the rarity of the surname, appears to be taking a backseat in importance after these recent decisions. In the ADLON, KEPLER, and HECTER decisions, the Examining Attorney's evidence showed, respectively, 75, 100, and 174 references for the marks in LexisNexis telephone directory searches. Compared to the approximately 324 million individuals in the United States (see http://www.census.gov/popclock/), these numbers would appear to designate the marks as extremely rare surnames. However, the Board found in each of these cases that if the evidence demonstrates that the mark is a surname – even for only a handful of individuals – and that the mark has no other recognized meaning under the third Benthin factor, the primary significance of the mark is that of a surname. In the ADLON decision in particular, the Board rejected the applicant's argument that the "rareness" of the surname should be dispositive because prior cases involving fewer than 100 occurrences of a surname resulted in registration. The TTAB rejected this "strictly numerical" approach to a surname analysis, and emphasized that the ultimate issue is whether the mark's primary significance to the public is as a surname – given that the statute does not say “primarily merely a common or well-known surname,” or similar wording to that effect.
Significant in most of these decisions was the second Benthin factor of whether there is a link between the mark and a person involved with the applicant's business. For example, specimens submitted in support of the BARR GROUP application contained several references to owner Michael Barr, while the KEPLER applicants used the pen name Lars Kepler to author their popular book series. The ALDECOA application contained several references to the Aldecoa founding family and its history in the coffee business. Similarly, the ADLON and BUTTERFIELDS applicants admitted that their marks originated as the surname of a founding individual or family, even if the business had long ceased to be associated with members of the founding family.
Yet, in a departure from its string of refusals, the TTAB reversed the refusal to register the mark VEASY for plants, flowers, and seeds. In re Suphachatwong Innovation Co., Ltd., Serial No. 86516441 (November 3, 2016). Although the Examining Attorney put forth evidence that 333 individuals had the mark as a surname (i.e., more than in the ADLON, KEPLER, and HECTER decisions), the Board appeared to be swayed by the fact that no one associated with the applicant had the surname Veasy. In addition, the Board noted the lack of any "contextual clues" in applicant's use of the mark and marketing materials that might create a consumer perception that VEASY is a surname, such as references to a family history with the goods (as in the ALDECOA decision) or using the mark in a possessive structure (as in the BUTTERFIELDS decision). Given the contextual evidence, the Board concluded that VEASY had not been "sufficiently exposed to the purchasing public that it is likely to be recognized as primarily merely a surname" and overturned the refusal to register the mark.
As a result of these recent decisions, applicants should be on notice that any mark that might be viewed as a surname – particularly if it has no other ordinary use or meaning – may be subject to a Section 2(e)(4) refusal, even if the evidence proves that the surname is extremely rare. When seeking to protect a mark comprised solely of a surname, applicants should be prepared to submit evidence that the mark has acquired brand significance (such as advertising expenditures, length of use, and the like), which can be used to overcome a surname refusal.