Tuesday, April 24, 2012

Test Your TTAB Judge-Ability: Is CROMWELL for Safety Helmets Primarily Merely a Surname?

The PTO issued a Section 2(e)(4) refusal to register CROMWELL for "headgear for protection against accident or injury, and parts and fittings therefor ..." on the ground that the mark is primarily merely a surname. Applicant Helmet Integrated Systems contended that the mark's "primary significance is Oliver Cromwell, a British general, Puritan statesman, and Lord Protector of England from 1653-1658." How would you rule? In re Helmet Integrated Systems Ltd., Serial No. 77697443 (April 10, 2012) [not precedential].

The evidence indicated that there are 10,000 or more people with the surname CROMWELL in this country, and the Board therefore found that CROMWELL is not a rare surname. The Board also concluded that CROMWELL has the "look and sound" of a surname.

The main question was whether CROMWELL has any meaning other than as a surname. Applicant (a U.K. company) urged that CROMWELL is a given name, and that the primary significance of "Cromwell" is a reference to Oliver Cromwell, a British historical figure.

Applicant pointed to a website identifying 1,500 persons with the given name “Cromwell," but Examining Attorney Priscilla Milton countered with other websites that state that "Cromwell" is a very rare given name" and is "an uncommon first name for men but a very common last name for both men and women." [Some websites say that the moon is made of blue cheese. So should we believe them? - ed.]. The Board concluded that this infrequent use as a given name does not affect the mark's surname significance.

The main thrust of Applicant's argument, however, was that "Cromwell" is primarily a reference to Oliver Cromwell. It pointed to several websites and to reference book listings for "Cromwell" in support of its argument. The Board observed that Applicant must show that "[t]he name 'Cromwell' [is] so widely recognized as to be 'almost exclusively associated in commercial impression with the historical figure[].'" In other words, it is the present day recognition of the name that is important, not its past historical significance.

The Board contrasted decisions regarding SOUZA (his music remains in the public's mind) and DA VINCI (still nearly exclusively associated with the 15th Century artist), with the MCKINLEY case (a past U.S. President of little current significance).

In view of the foregoing, we find that surname “Cromwell” is more akin to McKinley than Da Vinci. It is unlikely that American consumers would regard CROMWELL in connection with protective headgear, etc. as an arbitrary use of the name Oliver Cromwell, rather than merely a surname of any individual identified by that name. Accordingly, the evidence of “Cromwell” as a surname is greater than the evidence that “Cromwell” has any other significance.

And so the Board affirmed the refusal.

TTABlog comment: The SOUZA case involved fireworks and firework display services, a fact that increased the likelihood that the mark would bring to mind the name of the composer. Are there any goods you can think of that would, when branded CROMWELL, increase the likelihood that the Englishman would be brought to mind? Swords? Cutlery? Tea biscuits? Eccles pudding? Soused pig face?

Text Copyright John L. Welch 2012.


At 10:30 AM, Anonymous Anonymous said...

Sure it is a surname. But am I the only one who thinks that the entire body of US law on this in the USPTO is due for another look? Moreoever, does it really make sense to distinguish among pure surnames, initials and a surname and a full name for purpose of registration?

At 10:38 AM, Anonymous Robert M. O'Connell, Jr. said...

What? No mention of Thomas Cromwell (1485-1540), First Earl of Essex, who led Henry VIII's sack of the English monasteries?

At 12:17 PM, Blogger Bob Cumbow said...

Does it really not matter that Cromwell's militia were known as "roundheads" because of their distinctive helmets? I'm sure that's exactly what the applicant was getting at.

At 1:31 PM, Anonymous Anonymous said...

Definitely pudding

At 8:14 PM, Anonymous Tal Benschar said...

How about axes, specially sharpened for regicide?

At 5:57 AM, Anonymous John Goldsmith said...

The name Cromwell has been used, or given to a huge range of different goods, services and places based on the significance of Oliver Cromwell (1599-1658). For example a brand of gin, a railway locomotive, a Gibson guitar, a World War II tank and a town in New Zealand have all been named after him. Of the places in the USA named Cromwell I suspect that more than one was named after him. Today is the anniversary of Cromwell's birth incidentally!
John Goldsmith, Cromwell Museum, Huntingdon, England, john.goldsmith@cambridgeshire.gov.uk


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