Tuesday, July 30, 2013

Test Your TTAB Judge-Ability: Is JAKEMANS Primarily Merely a Surname for Medicated Confectionery?

The PTO refused registration of the mark JAKEMANS for "medicated confectionery; medicated confectionery containing menthol; lozenges for pharmaceutical purposes; pastilles for pharmaceutical purposes; medicated throat pastilles, throat lozenges," and for "non-medicated lozenges; confectionary, namely, pastilles; non-medicated throat pastilles; hard candies." A nationwide telephone listing revealed 87 listings for individuals with the surname JAKEMAN. But what about the well-known actor, Hugh Jackman? How do you think this came out? In re G R Lane Health Products Limited, Serial No. 85115445 (July 10, 2013) [not precedential].

In view of the small number of telephone listings, the Board deemed JAKEMANS to be "an extremely rare surname." The Examining Attorney pointed to a handful of Internet webpages that refer to persons with the JAKEMAN surname, but the Board found that these citations "do not reflect the type of uses that would outweigh the rareness of this surname to imbue it with primary surname significance."

Nothing in the record indicated that anyone named JAKEMAN or JAKEMANS is associated with applicant. However, negative dictionary evidence showed that JAKEMAN has no recognized, non-surname meaning.

Finally, the Examining Attorney argued that JAKEMAN has the look-and-sound of a surname because it is similar to JACKMAN. She pointed to 2,365 listings of JACKMAN in a nationwide telephone directory, online references to Hugh Jackman, and a third-party 2(f) registration for JACKMAN. Applicant, on the other hand, asserted that JACKMAN does not sound like JAKEMANS.

Although many surnames end in "man," so do many first names (e.g., Norman Vincent Peale  , Herman Melville, Sherman Lollar). The Board relied on In re "Baik" in observing that evidence of look-and-sound is not in itself enough to support a surname refusal.

The Board noted that the look-and-sound factor is highly subjective and, again citing Baik, pointed out that "[i]n cases where the proposed mark is a very rare surname, 'we cannot assume that the purchasing public will view the mark as a surname based on exposure to the surname use.'"

Resolving any doubt in favor of a applicant, the Board concluded that the PTO had failed to satisfy its burden of proof, and so it reversed the refusal.

Read comments and post your comment here.

TTABlog note: Judge Seeherman's opinion in In re Baik is worth remembering. [TTABlogged here]. Her view of Section 2(e)(4) is sometimes, but not always, followed.

Text Copyright John L. Welch 2013.


At 11:55 AM, Anonymous Freiburger said...

The Board's comment that the examining attorney's Internet references "do not reflect the type of uses that would outweigh the rareness of this surname to imbue it with primary surname significance" is important, I think, because the approach taken by this examining attorney is unfortunately the approach many examining attorneys take to these refusals. They introduce evidence that there are, say, 155 people in the country with the surname, include the form paragraph stating there is no minimum number of references and even rare surnames can be "primarily merely a surname," and then cite random people found on the Internet who have the surname (e.g., a website bio of a college professor, a person mentioned in passing in a newspaper article, etc.). These people are almost always of no particular repute, but the examining attorney will argue something to the effect that this evidence shows broad exposure of the surname to the public.

Common sense dictates that if there are 155 people in the country with the surname, what does it show that one can use an Internet search engine to find some of them? Unless these individuals have for whatever reason come to the public's attention, this type of evidence adds nothing to the examining attorney's case.


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