Friday, March 10, 2006

Citable No. 13: TTAB Affirms Surname Refusal of "GIGER MD" for Exercise Machines

I'm beginning to feel like Lucille Ball in the chocolate factory. The citable decisions are rolling out of the TTAB kitchen with increasing rapidity. In its 13th citable decision of 2006, the Board affirmed a Section 2(e)(4) refusal to register GIGER MD for therapeutic exercise machines. In re Giger, 78 USPQ2d 1405 (TTAB 2006).

Examining Attorney A.D. Saunders issued the PTO refusal, relying on 545 entries for the surname "Giger" in the USFIND database, "negative" dictionary evidence, LEXIS/NEXIS printouts that "show several individuals throughout the United States who have the surname 'Giger,' and a printout from indicating 15,177 matches for that surname in its database.

Joint Applicants Adrian and Thomas Giger argued that the Examining Attorney improperly included evidence with the PTO's denial of their request for reconsideration, but the Board disagreed, citing TBMP Section 1207.04.

The Board applied its standard Section 2(e)(4) test set forth in In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000). It first noted that 545 entries in the USFIND database "is not substantial evidence that the term 'Giger' is a common surname," and it then distinguished In re Gregory, 70 USPQ2d 1792 (TTAB 2004) [The surname "Rogan," which appeared in 1,087 phone listings, was not a rare surname because of the press attention paid to James Rogan, former California congressman and PTO Director]. The Board concluded that "Giger" is "not a common surname" and thus "it would be somewhat rare." However, the Board noted, such a surname may still run afoul of Section 2(e)(4).

Turning to the other factors, the Board pointed out that not only is the name "Giger" the surname of the applicants, but "applicant's surname is featured in Applicants' promotional material." Moreover, there is no evidence that "Giger" has any other meaning in English or any other language. Finally, the Board concluded that "Giger" has the "look and feel" of a surname. Those three factors weighed against the Applicants.

The Board therefore ruled that the Applicants had failed to overcome the PTO's prima facie case that GIGER is primarily merely a surname.

Moreover, the addition of MD to the surname GIGER does not change the significance of the mark:

"There would be nothing incongruous with using a surname with the abbreviation MD for medical and therapeutic equipment. It is certainly not a nebulous term that detracts from the surname significance."

Considering the primary significance of the mark when used with Applicants' goods, the Board concluded that the term is primarily merely a surname.

TTABlog comment: Of course "Giger" has the look-and-feel of a surname. It's just like "Geiger," as in Gary Geiger, former Red Sox outfielder and inventor of a device for keeping track of how many pitches a pitcher has thrown in a game (the "Geiger Counter").


Text Copyright John L. Welch.


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