Thursday, June 17, 2010

Precedential No. 22: Reversing 2(e)(4) Refusal, TTAB Finds "P.J. FITZPATRICK, INC." Not Primarily Merely a Surname

The TTAB reversed a Section 2(e)(4) refusal to register the mark P.J. FITZPATRICK, INC. for various construction services, finding the mark not to be primarily a surname. The Board attempted to clarify prior case law by stating that "if a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily a surname." In re P.J. Fitzpatrick, Inc., 95 USPQ2d 1412 (TTAB 2010) [precedential].

The case that particularly needed clarification was the CCPA's decision in In re I. Lewis Cigar Mfg. Co., 98 USPQ 265 (CPA 1953), in which the court found the mark "S. Seidenberg & Co.'s" to be primarily merely a surname. The Board observed that in Lewis Cigar, "the court did not find as a matter of law that a single initial added to a surname could never convey something other than surname significance." It depends on the facts.

Here there are two initials, not one, and "a segment of society uses multiple initials in lieu of given names, a fact not before the court in Lewis Cigar." According to the Board, Lewis Cigar suggests "that the coupling of two initials and a surname creates a full name and therefore a registrable mark."

Of course, the term "INC." has no effect on the Section 2(e)(4) question. The Board therefore held that P.J. FITZPATRICK, INC. is not primarily a surname.

TTABlog comment: The J.J. YELIN case in 2007 was a precursor to this ruling. (TTABlogged here). There the Board (again in a decision by Judge Bergsman) found the mark not to be primarily a surname, but on the narrower ground that the "primary significance of J. J. YELEY is the race car driver, and this primary significance outweighs the surname significance."

Text Copyright John L. Welch 2010.


At 9:45 AM, Blogger Pamela Chestek said...

How could you forget my favorite, J.W. Foster (, one of your 10 worst of 2005? We had J.J. Yeley beat by years.

At 10:02 AM, Anonymous Anne Gilson LaLonde said...

So what's the rationale for differentiating between two or more initials and one initial added to a surname? Would P. FITZPATRICK, INC. be primarily merely a surname? I don't think so. I see no principled basis for the distinction. But at least the Board was trying to give some guidance on surnames in this decision.

(And I agree with Pamela that the Foster decision was a bad one.)


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