Friday, July 28, 2006

TTAB Sinks "COLGATE SAILING SCHOOL," Affirms Section 2(e)(4) Surname Refusal

Let me say this right up front: I know nothing about sailing, other than what I gleaned from reading Patrick O'Brian's "Jack Aubrey" novels. So don't expect any sailing puns in this posting. The bottom line is this: the Board affirmed a Section 2(e)(4) refusal of the mark COLGATE SAILING SCHOOL for "conducting of classes and furnishing classroom and on-water instruction in sailing" ["SAILING SCHOOL" disclaimed]. In re Offshore Sailing School Ltd., Serial No. 76604329 (July 13, 2006) [not citable].

It was anything but smooth sailing for Applicant Offshore Sailing School. The Board relied on its standard four-factor Benthin analysis: rareness, connection, meaning, and "look and feel." In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995).

Examining Attorney Douglas M. Lee relied on evidence from the USFIND database, on website evidence showing the distribution of the surname COLGATE among the population of each of the fifty states, and on websites showing that "sailing school" is generic for the subject services.

Applicant conceded that COLGATE is the surname of its chairman, Steve Colgate, but it urged the Board to follow In re Hutchinson Technology, Inc., 7 USPQ2d 1490 (Fed. Cir. 1988), in which the CAFC panel majority found that HUTCHINSON TECHNOLOGY was not primarily merely a surname.

Steve Colgate
Applicant's Chairman

The Board found that the PTO had established a prima facie case, consisting of several hundred COLGATE surname references from the USFIND database. Although COLGATE is a "relatively rare surname" within the U.S., the remaining Benthin factors supported the refusal: COLGATE is the surname of someone associated with Applicant; Applicant failed to demonstrate that COLGATE has a non-surname meaning; and COLGATE has the "look and feel" of a surname because "it has the unmistakable structure of an English habitational name."

As to Applicant's Hutchinson Technology argument, both Applicant and the PTO pointed to TMEP Section 1211.01(b)(vi), which states that if the matter added to the surname is generic, then Hutchinson does not apply. The Examining Attorney proved via website evidence that SAILING SCHOOL is generic for "an institute for instruction in the field of sailing."

Therefore, the Board affirmed the Section 2(e)(4) refusal.

Text Copyright John L. Welch 2006


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