Thursday, October 02, 2008

TTAB Administers 2(e)(4) Kiss of Death to "SIMMONS COMICS GROUP" for Comic Books

Finding Applicant's evidence insufficient to show that Kiss guitarist Gene Simmons is a renowned historical figure for purposes of Section 2(e)(4), the Board affirmed a surname refusal of SIMMONS COMICS GROUP for comic books ["COMICS GROUP" disclaimed]. In re Gene Simmons Comics Group, Serial No. 78905279 (September 19, 2008) [not precedential].

The Board applied its usual 2(e)(4) analysis, finding that SIMMONS is a "very common surname" (ranking 92nd out of some 89,000 surnames in the 1990 census data), that the name of someone (Gene Simmons) associated with Applicant has that surname, and that Simmons has the "look-and-feel" of a surname.

Applicant argued that SIMMONS has a recognized meaning other than as a surname because Gene Simmons is "a very well know celebrity," i.e., "the world famous bass player for the musical group KISS." Therefore, Applicant argued, SIMMONS will not be perceived primarily as a surname "because of the mark's association with Gene Simmons, ... and the other SIMMONS trademarks owned by Applicant" [including GENE SIMMONS TONGUE for a magazine]. In support of its argument regarding the fame of Mr. Simmons, Applicant referred to the entry for "Gene Simmons" in Wikipedia.

The Board observed that "decisions concerning historical names draw a line between names which are so widely recognized that they are almost exclusively associated in terms of their commercial impressions with the historical figures, and names which are semihistorical in character." Quoting In re Pickett Hotel Company, 229 USPQ 760, 761 (TTAB 1996).

Here, the evidence was insufficient to prove that the term SIMMONS would be "almost exclusively" associated with Gene Simmons. [TTABlog comment: To me, SIMMONS brings to mind Simmons College, right near Northeastern University School of Law, the site of the upcoming "TTAB Comes to Boston" event]. Moreover, to the extent that Gene Simmons is well known, "his renown is primarily in relation to the musical group, Kiss."

"There is no evidence that the surname SIMMONS would be recognized by purchasers as identifying Gene Simmons in the completely different and unrelated context of comic books. In this regard, we point out that applicant's registrations for comic books are not proof of any exposure of the registered marks to the purchasing public; nor do they demonstrate that anyone associates the name SIMMONS for comic books with Gene Simmons."

In short, on this record, Gene Simmons has not been shown to be an historical figure of the magnitude of DA VINCI, SOUSA, and M.C. ESCHER.

The Board therefore concluded that SIMMONS would be perceived primarily as a surname. Addition of the "highly descriptive, if not generic," phrase COMICS GROUP to SIMMONS "does nothing to overcome the surname meaning of the mark SIMMONS COMICS GROUP as a whole."

And so the Board affirmed the Section 2(e)(4) refusal.

Text Copyright John L. Welch 2008.


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