TTABlog Collection of Section 2(e)(4) "Primarily Merely A Surname" Cases

Here is a collection of Section 2(e)(4) surname cases from the TTABlog. It appears from this collection that the odds are about 2 to 1 that a surname refusal will be upheld. Of course, most of the decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.


The Board typically looks to four factors in determining whether a mark’s primary significance to the public is as a surname: (1) whether the surname is rare; (2) whether anyone connected with the owner of the mark  has the involved surname; (3) whether the term has any other recognized meaning; and (4) whether the term has the "look and feel" of a surname. Miller v. Miller, 105 USPQ2d 1615 (TTAB 2013) [precedential].

Judge Seeherman, beginning with her concurrence in  In re Joint-Stock Company "Baik", has urged that more weight be given to the "rareness" factor, because the aim of Section 2(e)(4) should be to make sure that surnames are available for registration by others having that surname. In her view, whether the mark has the "look and sound" of a surname, and whether it is the name of someone associated with the owner of the mark, are not relevant to that question.

As to surname rareness, note that the U.S. Bureau of the Census has released its list of "Frequently Occurring Surnames from Census 2010." (link here).


Marks found to be primarily merely a surname under Section 2(e)(4):

• MERLO'S MERLOT for Wine is Primarily a Surname, Confusable with LAGO DI MERLO, Says TTAB
• TTAB Affirms Surname Refusal of MOTT'S for Baby Food
• Another Surnamed Law Firm (THE SIMMONS FIRM) Bites the TTAB Dust
• Precedential No. 2: TTAB Sustains Section 2(e)(4) Surname Opposition to "MILLER LAW GROUP" for Legal Services
• Two Surname Refusals for Your Perusal: One TTAB Reversal (THE HENDRYX HOTEL affirmed)
• TTAB Affirms Section 2(e)(4) Surname Refusal of GRISWALD
• Test Your TTAB Judge-Ability: Is CROMWELL for Safety Helmets Primarily Merely a Surname? 
• WYHA? TTAB Affirms Section 2(e)(4) Surname Refusal of "WEIS" for Frozen Dairy Products
• Precedential No. 49: TTAB Affirms Surname Refusal of "BINION"; Renown of Binion Family Does Not Equal Acquired Distinctiveness
• Another WYHA? TTAB Affirms 2(e)(4) Surname Refusal of "MERIWETHER" for Cabinetry 
• Applicant Fails to Prove Historical Significance of "DAIMLER" for Vehicles, TTAB Affirms 2(e)(4) Surname Refusal 
• TTAB Administers 2(e)(4) Kiss of Death to "SIMMONS COMICS GROUP" for Comic Books 
• Despite Claim that "MERROW" Means "Mermaid," TTAB Affirms 2(e)(4) Surname Refusal
• TTAB Affirms Surname Refusal of "HARRINGTON OAK" for Flooring
• TTAB Reverses Surname Refusal of "CURLIN" for Medical Devices 
• TTAB Affirms 2(e)(4) Surname Refusal of "MARRIOTT" for Charitable Services; Judge Seeherman Concurs
• Precedential No. 62: TTAB Affirms Surname Refusal of "VOSE & SONS" for Pianos
• Precedential No. 24: TTAB Rejects Historical Figure Contention, Affirms Surname Refusal of "WATSON"
• Elves Lose Appeal: TTAB Affirms Surname Refusal of "KEEBLER" for Snacks
• TTAB Affirms 2(e)(4) Surname Refusals of "ABANTE" and "RUXTON PHARMACEUTICALS"
• "DR. BRANDT" Primarily Merely a Surname for Skin Care Products, Says TTAB
• TTAB Rules "CHISHOLM" Primarily Merely a Surname for Smokeless Tobacco
• TTAB Affirms 2(e)(4) Refusal of "BRANIFF" as Primarily Merely a Surname for Air Transport
• TTAB Sinks "COLGATE SAILING SCHOOL," Affirms Section 2(e)(4) Surname Refusal
• TTAB Twin Killing: Surname Refusals of "LAURENTI" and "BREIL" Upheld
• Citable No. 13: TTAB Affirms Surname Refusal of "GIGER MD" for Exercise Machines 
• TTAB Affirms Surname Refusal of "MEARS" for Semiconductor Materials
• TTAB Affirms Surname Refusal of "PICCHIOTTI" for Jewelry 
• TTAB Affirms 2(e)(4) Surname Refusal of "EBNER"
• TTAB Affirms PTO'S Refusal of "MARAJ" As Surname
• TTAB Socks It To Norwegian Skier Vegard Ulvang
• Willie Mosconi and Firmant Arthur Franke: Historic Figures and Section 2(e)(4) (FRANKE affirmed)

Marks found not to be primarily merely a surname under under Section 2(e)(4):

• Test Your TTAB Judge-Ability: Is JAKEMANS Primarily Merely a Surname for Medicated Confectionery?
• Two Surname Refusals for Your Perusal: One TTAB Reversal (LORCH reversed)
• Test Your TTAB Judge-Ability: Is "CARDANO" Primarily Merely a Surname? 
•  Emphasizing Rareness of the Surname, TTAB Reverses Section 2(e)(4) Refusal of "BOVIS FOODS"
• Precedential No. 22: Reversing 2(e)(4) Refusal, TTAB Finds "P.J. FITZPATRICK, INC." Not Primarily Merely a Surname
• Test Your TTAB Judge-Ability: Does "VALVERDE" Have the Look and Sound of a Surname
• Extreme Rareness of "RENATI" as Surname Leads to 2(e)(4) Reversal
• TTAB Reverses Surname Refusal of "SIGMANN" for Kitchen Fixtures 
• Giving Added Weight to the Rareness Factor, TTAB Reverses Surname Refusal of "BERGFELD" for Wine 
• Precedential No. 60: "J. J. YELEY" Not Primarily Merely A Surname, Says TTAB 
• Precedential No. 56: TTAB Reverses Surname Refusal of "BAIK" for Vodka 
• TTAB Reverses Surname Refusal of "FRESCH" for Frozen Pizza 
• Finding PTO's Proofs Inadequate, TTAB Reverses Surname Refusal of "SIKORSKY" 
• TTAB Says "VAULTZ" for Purses Not Primarily Merely a Surname 
• Divided TTAB Panel Finds "J.W. Foster" Not Merely a Surname
• In a Citable Decision, TTAB Reverses Surname Refusal of "FIORE"
• TTAB Reverses Surname Refusal Of "LATAS" For Avocado Rootstocks
• Willie Mosconi and Firmant Arthur Franke: Historic Figures and Section 2(e)(4) (MOSCONI reversed)

TTABlog note: I don't blog every 2(e)(4) case, particularly mundane affirmances. So the chances of a refusal being affirmed are probably higher than 2 to 1.

Text Copyright John L. Welch 2013.