Wednesday, December 13, 2006

TTAB Affirms 2(e)(4) Surname Refusals of "ABANTE" and "RUXTON PHARMACEUTICALS"

If you expect to overcome a Section 2(e)(4) surname refusal, you'd better come up with better arguments than the two applicants below: for example, a solid, non-surname meaning might do the trick, or maybe a showing that the surname is exceedingly rare, or maybe that the mark doesn't have the "look and feel" of a surname. Most of the time, though, the refusal is affirmed, and that's just what happened here.

In In re Ruxton Pharmaceuticals, Inc., Serial No. 78496761 (October 31, 2006) [not citable], the Board affirmed a surname refusal of the mark RUXTON PHARMACEUTICALS for pharmaceuticals. Examining Attorney Marcie R. Frum Milone provided a USFIND database listing of 115 entries for individuals with the surname RUXTON, various website pages and articles using RUXTON as a surname, and “negative” dictionary evidence indicating that RUXTON lacks any non-surname significance. She also contended that RUXTON has the “look and feel” of a surname.

Applicant argued that RUXTON is a very rare surname that has other meanings (a town and creek in Colorado, and a city in Maryland), and it pointed out that no one in the corporation “possesses the name ‘Ruxton.’”

The Board agreed that RUXTON is “not a common surname” and is “somewhat rare.” However, the database listing showed use of the surname across the country, and therefore the Board found that the mark's surname significance “would be recognized by prospective purchasers.” The geographical uses of RUXTON were insignificant, and did not detract from its primary meaning as a surname. Finally the Board found that the term has the look and feel of a surname. And the addition of the generic term PHARMACEUTICALS could not overcome the surname significance.

In In re Lockton Companies, Inc., Serial No. 78461678 (November 13, 2006) [not citable], the Board affirmed a surname refusal of ABANTE for human resources and employee benefits consulting. Examining Attorney Robert J. Lavache submitted NEXIS search results revealing 355 residential listings for individuals with the surname ABANTE, along with 8 articles and several dozen website hits. Negative dictionary evidence showed "no entries for the word 'abante.'"

Applicant Lockton argued that ABANTE is an '"extremely rare" surname (and that only 82 of the PTO's listings were not duplicates), that it has other meanings because it is the Latin root word for "advance" or "advantage," that no one associated with Applicant has the surname ABANTE, and that ABANTE does not have the look and feel of a surname.

The Board agreed that ABANTE is a rare surname, but pointed out that even a rare surname is unregistable (absent secondary meaning) if its primary significance is that of a surname. The PTO's evidence sufficed to establish a prima facie case in that regard.

The fact that no one in Applicant's organization has the surname ABANTE does not favor Applicant, but is merely neutral. As to the supposed other meanings of ABANTE, the Board doubted that the purchasing public would be aware of its significance as a Latin term. In fact, the Board noted, Applicant considered it necessary to provide the meaning of the Latin term ABANTE at its home page. In short, the Board found that ABANTE has no other recognized meaning other than as a surname.

Finally, as to look and feel, the Board noted that ABANTE is like various surnames having the "-ante" suffix: Amante, Asante, Assante, Adante, and Arante. It therefore found (in admittedly a subjective determination) that ABANTE has the look and feel of a surname.

Applicant noted that its mark was originally refused registration under Section 2(d) in light of two registered ABANTE marks, and it therefore argued that the PTO has in the past "appropriately given the mark ABANTE trademark significance." But the Board once again pointed out that it is not bound by these prior determinations of registrability, and that each case must be decided on its own set of facts.

TTAB Comment: A search for the word "surname" in the TTABlog Search box yields the following marks refused registration on Section 2(e)(4) grounds: DR. BRANDT, CHISHOLM, BRANIFF, COLGATE SAILING SCHOOL, LAURENTI, BREIL, GIGER MD, MEARS, PICCIOTTI, EBNER, MARAJ, ULVANG, and FRANKE.

Refusals were reversed by the Board for SIKORSKI, VAULTZ, J.W. FOSTER, FIORE, LATAS, and MOSCONI. Can you guess why these marks got off the hook?

Text Copyright John L. Welch 2006.


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