Thursday, May 02, 2013

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 Of course, most of the decisions are not precedential, but even non-precedential decisions may be helpful in framing effective arguments and locating precedential support for them.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):

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

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.


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