Tuesday, September 12, 2006

Finding PTO's Proofs Inadequate, TTAB Reverses Surname Refusal of "SIKORSKY"

The PTO never got off the ground with its Section 2(e)(4) refusal to register the mark SIKORSKY for sports knives, videogames, jewelry, umbrellas, and other ancillary goods. The Board reversed the refusal, ruling that the PTO failed to establish a prima facie case. In re Sikorsky Aircraft Corp., Serial No. 78221800 (August 25, 2006)[not citable].

The Examining Attorney argued that SIKORSKY is primarily merely a surname, albeit a rare one. She asserted that SIKORSKY is the surname of Igor Sikorsky, Applicant's founder; that the term has no meaning in ordinary language; and that by its nature, the term has only surname significance.

However, the PTO produced evidence of “only one individual in the entire United States with the surname ‘Sikorsky.’” That individual, now deceased, was indeed the founder of Applicant Sikorsky Aircraft Corporation in 1923. But there was no evidence that Igor Sikorsky “is well known or that his name has had wide exposure to the purchasing public."

Although Igor Sikorsky is the name of someone associated with Applicant -- a factor that would normally weigh in favor of the PTO's position -- the Board questioned “whether this reflects current use as a surname by anyone in the United States or current perception of the term as a surname."

Moreover, the Examining Attorney failed to introduce evidence -- such as the absence of the term “Sikorsky” from dictionaries -- that the term has no meaning other than as a surname.

Sikorsky Bridge
Milford/Stratford, Connecticut

Finally, although the PTO asserted that "Sikorsky" has the structure and pronunciation of a surname, that assertion was based on the unproven claim that Sikorsky has no other meaning. Otherwise, there was no evidence or explanation to support the PTO's "conclusory contention" that Sikorsky has the look and sound of a surname.

The Examining Attorney also argued that Applicant's ownership of a Section 2(f) registration for SIKORSKY for aircraft "amounts to a concession as to the present application … that the term is primarily merely a surname.” However, the PTO provided no authority to support that contention.

TTABlog comment:I think this decision may just land on this year's "ten worst" list. The Board's reasoning regarding the "look and sound" of the word "Sikorsky" was particularly dubious. There was indeed evidence that "Sikorsky" has the look and sound of a surname: the fact that it was the surname of Applicant's founder. Moreover, common sense indicates that Sikorsky has the look and sound of a surname. Isn't that worth something?

The Board refused to consider the evidence submitted by Applicant that showed 113 telephone listings in the United States for people with the surname Sikorsky, because that evidence was not part of the PTO's case. But why shouldn't the Board consider that evidence? It was part of the record. Not only does it show that "Sikorsky" is not so rare a surname, but it also bolsters the argument that "Sikorsky" has the look and feel of a surname.

Text Copyright John L. Welch 2006.


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