Friday, March 06, 2009

Giving Added Weight to the Rareness Factor, TTAB Reverses Surname Refusal of "BERGFELD" for Wine

Perhaps the TTAB is moving toward adoption of Judge Seeherman's enlightened view of the Section 2(e)(4) surname refusal, a view expressed in her concurring opinion in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007) [precedential]. [TTABlogged here; further discussion in Section IV of this article]. The Board reversed a Section 2(e)(4) refusal of the mark BERGFELD for wine, giving "much more weight" to the first Benthin factor (the rareness of the surname) than the other three factors. In re Hall Wines, LLC, Serial No. 78926151 (February 10, 2009) [not precedential].

Applying the standard four-factor analysis for surname refusals, the Board considered: (1) the degree of the surname’s "rareness"; (2) whether anyone connected with applicant has the mark as a surname; (3) whether the mark has any recognized meaning other than as a surname; and (4) whether the mark has the "look and sound" of a surname.

As to the first factor, it concluded that BERGFELD is an "extremely rare surname." The PTO's evidence showed fewer than 300 individuals with that surname. The Board recognized that there are many past cases in which a surname was held to be rare but unregistrable with fewer than 300 "hits," but also many Board decisions in which a surname was held to be registrable despite more than 300 hits. "In other words, there remains no threshold number of surname listings upon which we base our decisions."

However, we believe it is important to accord the proper weight to the "rareness" of the surname factor while keeping in mind the purpose of Section 2(e)(4) of the Act. As explained by Judge Seeherman in her concurrence in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 at 1924 (TTAB 2007), the "purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames,... Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses..."

In other words, the Board agreed with Judge Seeherman's view that "rareness" is the most important factor in the surname analysis. In short, if there are not many people with the surname in question, then it is less likely that any person will be affected by registration of the surname as a trademark or service mark for particular goods or services, and applying the Section2(e)(4) bar is less important.

Turning to the other factors, as to the second there was no doubt that the mark BERGFELD is derived from Robert Bergfeld, a pioneering early-20th century wine grower (referred to at Applicant's website). However, Applicant's counsel offered evidence that the term refers to an historic building at the winery, and indeed Applicant's label depicts the "Bergfeld" building. Moreover, no one associated with Applicant has or ever had that surname. So this factor did not weigh in favor of a surname refusal.

As to the third factor, Applicant failed to convince the Board that BERGFELD has a recognized meaning other than as a surname.

As to the fourth factor, whether the mark has the "look and sound" of a surname (a factor which Judge Seeherman particularly criticized), the PTO submitted evidence of other surnames that either begin with "berg" or end with "feld," as well as a website posting, "How to recognize Jewish names," which listed "names ending '-feld'." Applicant, on the other hand, contended that BERGFELD mark is "reminiscent of a city name..., e.g., Hatfeld, Heidelberg, Hardfeld, Bonfeld and Heimfeld." Noting that this fourth factor is "very subjective," the Board could draw no conclusion either way.

Balancing the four factors, the Board made "no secret that the first factor, rareness of the surname, has been given much more weight than the other three factors. And, in doing so, we find that any slight tilt toward finding the mark as being primarily a surname based on the other factors is outweighed by the fact that there are fewer than 300 persons with the surname 'Bergfeld.'"

And so, the Board reversed the refusal.

TTABlog comment: Hooray! Judge Seeherman's concurring opinion in Baik deserves a thoughtful reading, as do her subsequent comments in In re Marriott Int'l, Inc., Serial Nos. 78489804 and 78489829 (November 23, 2007) [not precedential] [TTABlogged here] and in In re Curlin Medical Inc., Serial No. 78560314 (February 11, 2008) [not precedential] [TTABlogged here] .

Judge Seeherman's dissent in In re Builder's Best, Inc., Serial No. 76642671 (April 30,2008) [not precedential], provided some additional insight into her reasoning. There, the panel majority found the mark LOWES for dryer vent ducts to be primarily merely a surname. For Judge Seeherman, however, the dispositive factor was that "LOWES is an extremely rare surname." She recognized that in some precedential decisions, the fact that a surname was rare did not shield it from a Section 2(e)(4) refusal. "In those cases, the Board and the courts looked to other factors, such as whether the term would be perceived as a surname because, for example, it was the name of someone associated with the applicant, or because it was the name of someone who had public recognition." However, many of those cases were decided prior to the availability of computer databases, and the Board and courts were concerned that print directories were just the "tip of the iceberg." Now, however, computer databases allow the Board to determine whether a term is "truly a rare surname."

In footnote 10, the panel here picked up on the point about computer databases:

We do note, however, that the electronic databases available to examining attorneys today are far more comprehensive and current than the reference materials available in the past; thus, we can presume that the number of persons listed (absent duplicative entries) is a fairly accurate estimation of the number of individuals with the surname in the entire United States.

Text Copyright John L. Welch 2009.


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