Monday, December 10, 2007

TTAB Affirms 2(e)(4) Surname Refusal of "MARRIOTT" for Charitable Services; Judge Seeherman Concurs

In this rather mundane Section 2(e)(4) case, Judge Seeherman took the opportunity to expand on the thought-provoking comments made in her recent concurring opinion in In re Joint Stock Company "Baik", Serial No. 78521961 (TTABlogged here) regarding the Board's surname test. Here, she concurred in the Board's ruling that MARRIOTT is primarily merely a surname for various charitable services and charitable fund-raising services. In re Marriott Int'l, Inc., Serial Nos. 78489804 and 78489829 (November 23, 2007) [not precedential].

Applicant maintained that MARRIOTT is an extremely rare surname: only about .002% of the U.S. population has that surname. The Board noted, however, that "given the large number of different surnames in the United States, even the most common surnames would represent but small fractions of the total population." More significant to the Board was the telephone directory evidence showing that "in excess of 2000 people in the United Stats have the surname 'Marriott.'" Therefore, it concluded that MARRIOTT is not a rare surname.

Moreover, the fact that the founder of Applicant and the current Chairman and CEO have the name "Marriott" reinforces the surname significance, as does the wide exposure of the "Marriott" name by reason of the activities of the Marriott family.

The Examining Attorney submitted negative dictionary evidence showing that "Marriott" has no non-surname meaning.

As to the so-called "look and feel" factor, the Board agreed with the Examining Attorney that MARRIOTT has the "look and sound" of a surname, "especially since the record shows that there are numerous individual with the surname 'Marriott,' that such term has no meaning or connotation other than its surname significance; and that nothing in the record indicates that MARRIOTT would be perceived as an initialism or acronym, or a coined term."

Applicant pointed to 14 registrations it owns for marks consisting of or containing the term MARRIOTT, all without a 2(f) claim. The PTO, however, submitted five of Applicant's five registrations that did issue under 2(f). The Board, however, noted that its task was to determine the issue based on the record before it, regardless of these prior registrations.

The TTAB therefore affirmed the refusal.

Judge Seeherman's concurrence emphasized again that the rarity of the surname is the critical factor in the 2(e)(4) analysis:

"... if the Examining Attorney cannot show that a reasonable number of people have a particular surname, in my view the Office cannot meet its burden of prima facie showing that a mark is primarily merely a surname.

"It is only after the Office has met the burden of showing that a mark is not an extremely rare surname that the other factors should come into play. In effect, I suggest that even if all of the other factors that we use to determine surname significance were to favor the Examining Attorney's position, if the surname is so rare that essentially no one will be affected by the registration, the mark should be registrable. The remaining factors are used in determining whether, even though the Office has shown that the mark is primarily merely a surname, or whether it would have another, non-surname significance to consumers."

Evidence as to "look and feel" is relevant to show that "a term does not have the look and feel of a surname and therefore would not be perceived as a surname."

"Accordingly, evidence on this factor would be part of the applicant’s evidence rebutting the prima facie case made by the Office showing that a significant number of people have a surname, to demonstrate that the term is not primarily merely a surname because it will not be perceived primarily merely as a surname."

TTABlog comments: As previously discussed, if the Board were to consider the rareness of the surname to be the critical factor, as Judge Seeherman urges, the Board would seemingly have to set some benchmark or minimum number regarding the frequency of a surname that would constitute a prima facie showing under 2(e)(4). It seems unlikely that the the Board will want to do that.

And what should the numerical threshold be? Should it be lower when ordinary goods or services or involved, like clothing or restaurant services, because it is more likely that a person with the same surname would want to the surname as a mark for those goods or services? Should the threshold be higher when obscure goods or services are involved, because few people would want to use their own surname as a mark for those goods or services?

The look-and-feel factor, the question of whether anyone associated with applicant has the surname, and the notoriety of persons with that surname, currently provide the Board with additional considerations that allow the Board to find that a mark is "primarily merely a surname," so that the Board does not have to set any numerical threshold. But do those additional considerations make sense in light of the purposes of Section 2(e)(4)? It doesn't seem so, at least not with regard to the PTO's establishing its prima facie case that the mark is a not so rare as to fall outside the scope of 2(e)(4).

Text Copyright John L. Welch 2007.


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