Tuesday, March 13, 2007

Elves Lose Appeal: TTAB Affirms Surname Refusal of "KEEBLER" for Snacks

The Keebler elves found out that in the real world, the cookie does not always crumble in your favor. The Trademark Trial and Appeal Board affirmed a Section 2(e)(4) refusal of the mark KEEBLER for "snack packs consisting of a combination of crackers and cheese or cookies and pudding," finding it to be primarily merely a surname. In re Kellogg North America Co., Serial No. 76610903 (February 22, 2007) [not precedential].

The Board applied its standard Section 2(e)(4) analysis in finding that Examining Attorney Anne Farrell established a prima facie case that Applicant Kellogg failed to rebut. Three out of four factors supported the PTO's position, while the fourth was neutral.

Rareness: A search of the USFIND database yielded 492 listings for individuals with the surname "Keebler" and a GOOGLE brand search uncovered a "Keebler" family website and a Keebler coat of arms. [Don't ask -- ed.]. Kellogg argued that, taking into consideration the estimated 293 million people in the U.S., KEEBLER is a very rare surname. The Board, however, pointed out that there is no "benchmark" or minimum number of listings required to establish a prima facie case, and that even a rare surname is unregistrable under Section 2(e)(4), absent secondary meaning.

Connectedness: Kellogg asserted that no one associated with it has the surname "Kellogg," and that this factor favored registration. The Board, however, pointed out that the lack of such a connection is neutral, not supportive of Kellogg's position.

Other Meaning: There was no evidence that KEEBLER has any other recognized meaning. The Examining Attorney submitted a dictionary excerpt that did not contain an entry for the word "keebler." [So called "negative dictionary evidence."]

Look and sound: The Board ruled that KEEBLER looks and sounds like a surname. It is not an acronym, initialism, or coined term, and it is "not unlike" other surnames ending in "-ler" such as Miller, Butler, Wheeler, Fuller, or Fowler. [TTABlog Note: A tv trivia website asserts that the original Keebler Company was named after a baker named Godfrey Keebler].

Having flunked the four-part surname test, Kellogg argued that it is entitled to registration because it owns a 1926 registration for KEEBLER, but the Board pointed out that under the 1905 Trademark Act, the registrant would have had to show 10 years of use. Thus this registration did not support Kellogg's position that it is entitled to registration here without proof of acquired distinctiveness. Moreover, the Examining Attorney submitted a 1999 registration for KEEBLER that issued pursuant to Section 2(f).

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2007.


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