Friday, October 01, 2010

Emphasizing Rareness of the Surname, TTAB Reverses Section 2(e)(4) Refusal of "BOVIS FOODS"

Judge Seeherman applied her rareness-focused approach to the Section 2(e)(4) analysis of the mark BOVIS FOODS for "wholesale distributorship services featuring food products," resulting in a Board ruling that the mark is not primarily merely a surname. Consequently, it reversed the Section 2(e)(4) refusal. In re Nick Bovis, Serial No. 77502609 (September 28, 2010) [not precedential].

The Applicant and the Examining Attorney did not argue that the word "FOODS" was of any import on the issue at hand, and the Board agreed. It proceeded to apply the four Benthin factors to the word BOVIS in view of the record evidence.

Closely reviewing the Examining Attorney's directory evidence, the Board boiled it down to 72 listings, leading it to conclude that BOVIS is an "extremely rare" surname. It noted that BOVIS is the surname of applicant himself. As to whether BOVIS has any other meanings, Applicant pointed out that "bovis" is the singular genitive form of the Latin rood "bov-,: which means ox or cow. The Board observed that "a majority of Americans would be unaware of these meanings," but that some might view BOVIS as "somehow related to the word bovine," particularly in connection with Applicant's food distributorship services.

The evidence did not show that BOVIS is associated with any individual of notoriety. As to whether BOVIS has the look and feel of a surname, the Board considered the Examining Attorney’s argument as indicative of "how nonsensical the interpretation of this factor has become."

The examining attorney argues that ... surnames listed in [the] data end in the same last three letters, e.g., Davis, Jarvis and Travis, or the same last two letters, e.g., Harris and Willis, while others begin with “Bo,” e.g., Boyer, Boone and Boyle. *** Using the examining attorney’s approach, we could say that BOVIS has the look and feel of a common noun because “book” and “bone” begin with the letters “Bo,” or because “trellis” and “clematis” end in “is.”

The Board concluded that the Examining Attorney's evidence does not support the conclusion that BOVIS has the look and feel of a surname.

The panel then turned to an explanation of how Section 2(e)(4) should work.

The four factors we have discussed weigh different concerns. The second through fourth factor deal with whether the mark will be perceived as primarily merely a surname. *** [W]e consider the factor of whether the mark is the surname of someone connected with the applicant, in terms of supporting a refusal of registration, to have less weight in the overall analysis.

But the first factor, the rareness of the surname, is not concerned with whether the term is "primarily merely" a surname; it addresses "the basic reason why marks that are primarily merely surnames are prohibited from registration."

The statute reflects the common law recognition that surnames are shared by more than one individual, each of whom may have an interest in using his surname in business.

As Judge Seeherman wrote in the precedential Baik decision, "The statute reflects the common law recognition that surnames are shared by more than one individual, each of whom may have an interest in using his surname in business."

Giving greater weight to the rareness of the surname BOVIS than to the other factors, The Board found that "the Office has not met its burden of proving that the mark is primarily merely a surname."

TTABlog comment: FWIW, I've endorsed Judge Seeherman's view of Section 2(e)(4), and expect it to become the accepted view. See, for example, other TTABlog postings here, and here.

Text Copyright John L. Welch 2010.


At 9:25 AM, Anonymous Anonymous said...

TIL the meaning of FWIW.

At 11:06 AM, Blogger Pamela Chestek said...

But competitive need wasn't the only reason for surname refusal. The surname refusal is a Section 2(e) refusal, which is a category for marks that consumers may not perceive as trademarks by their nature. So there still is some validity in evaluating whether consumers recognize the trademark significance, to which the other factors are relevant.

Having given the party line, I think it's a rare case where a consumer would think it was just someone's name and not a trademark - maybe different when it was "hey, I get my milk from Wilson's Farm," but not in today's consumer environment. So I'm ok with only worrying about competitive need, except in the rare case.


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