Thursday, December 13, 2012

Two Surname Refusals for Your Perusal: One TTAB Reversal

Try your luck with these two Section 2(e)(4) refusals. In the first, the PTO deemed the mark LORCH for electric welding machines and products, to be primarily merely a surname. In the second, THE HENDRYX HOTEL for hotel, restaurant, and bar services, faced the surname bar. In each case the surname had no non-surname meaning, and in each case no person associated with the applicant had the surname. So what's left? The rareness of the surname, and its "look-and-feel." How do you think the appeals came out? [Post your comment here].

In re Lorch Schweißtechnik GmbH, Serial No. 85037839 (November 29, 2012) [not precedential]. The Examining Attorney submitted 470 listings for the name "Lorch" from the Lexis-Nexis database, leading the Board to conclude that "Lorch" is an "extremely rare surname." As to "look and feel" [shouldn't it be look and sound? - ed.], the Examining Attorney provided no evidence or argument. The Board observed that "Lorch" does not sound like a surname [What about Welch? - ed.], nor was there evidence that it has the structure or format of a surname. [I repeat, Welch? - ed.]. Weighing all the pertinent elements of the Benthin test, and giving the applicant the benefit of any doubt, the Board found that LORCH is not primarily merely a surname.

In re SBE Hotel Licensing, LLC, Serial No. 85054771 (November 27, 2012) [not precedential]. The Board pointed out that when generic wording is combined with a surname, the entire mark must be refused registration under Section 2(e)(4). [E.g., PICKETT SUITE HOTEL, HAMILTON PHARMACEUTICALS, BRASSERIE LIPP].

The 2000 census revealed 837 occurrences of "Hendryx," leading the Board to conclude that it is a "somewhat rare surname." However, even rare surnames may be refused registration under Section 2(e)(4) if the primary significance of the term to the purchasing public is that of a surname. [E.g., PIRELLI]. "Hendryx" is not so rare that this factor outweighs the others.

As to "look and feel," Examining Attorney Dominick John Salemi submitted not only the evidence that numerous individuals have the surname HENDRYX, but also census data showing 41,879 occurrences of the surname "Hendricks" and 34,032 occurrences of "Hendrix," both of which fall within the 1,000 most popular U.S. surnames. Furthermore, HENDRYX does not have the appearance of a coined term or an initialism or acronym. In short, the surname significance of HENDRYX would be readily recognized.

The Board concluded that the PTO had established a prima facie case, which Applicant failed to rebut. And so it affirmed the refusal.

Text Copyright John L. Welch 2012.


At 12:38 PM, Anonymous Anonymous said...

In the Lorch case, I would think that surname could be considered more common in Germany. I know that evidence might not be considered by the USPTO as proof itself of the commonness of the surname but I would think that the examiner could submit that evidence to show that "Lorch" has the look and feel of a surname.

In the Hendryx case, there might not be a 2(c) issue because Jimi Hendrix is dead and there's the "y" in place of the "i" but but I would think that mark is a little dangerous for a 2(a) opposition or right of publicity action, assuming no consent or license from Hendrix' estate. The PTO might not have the resources or inclination to refuse the mark under 2(a) though I believe that is a possibility.


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