Tuesday, October 23, 2007

Precedential No. 60: "J. J. YELEY" Not Primarily Merely A Surname, Says TTAB

NASCAR driver J. J. Yeley won the checkered flag at the end of his race to register the mark J. J. YELEY for a potpourri of goods in 12 classes, ranging from metal piggy banks to baby bottles to clothing to vehicle floor mats. The PTO had refused registration under Section 2(e)(4), maintaining that the mark is primarily merely a surname, but the Board threw it in reverse. In re Yeley, 85 USPQ2d 1150 (TTAB 2007) [precedential].

A declaration from Applicant Yeley regarding NASCAR marketing and his popularity convinced the Board that the "primary significance of J. J. YELEY is the race car driver, and this primary significance outweighs the surname significance." [TTABlog note: there didn't seem to be much evidence of surname significance anyway: only 197 phone directory hits for the surname "Yeley."]

The Examining Attorney contended, based on the case law, that the addition of initials to a surname does not detract from the surname significance, and may actually enhance it. The Board, however, noted that this was not a per se rule. The determination under Section 2(e)(4) depends on how the public perceives the term. Here, the board was convinced that "the primary significance of J. J. Yeley is a personal name and the identity of the race car driver."

And so the Board reversed the refusal.

TTABlog comment: I must confess, I never heard of J. J. Yeley. But then, you probably never heard of C. J. Brown.

Text Copyright John L. Welch 2007.


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