TTAB Reverses Section 2(e)(4) Surname Refusal of ROMANÓV for Decorative Eggs
The Board reversed a Section 2(e)(4) refusal to register the mark ROMANÓV for decorative eggs made of precious metals, jewelry, and picture frames, finding that the mark is not primarily merely a surname. The rareness of the surname "Romanov," coupled with its historical significance as the name of the imperial dynasty that ruled Russia for centuries, convinced the panel majority that the refusal must be reversed. Judge Seeherman concurred in the result, but would have based the ruling solely on the rareness of the surname. In re The Hyman Companies Inc., Serial No. 85483695 (June 4, 2014) [not precedential].
The Examining Attorney contended that ROMANÓV is a common surname, based on "100+ Results" from the 411.com Free Directory Assistance website. The Board assumed that 100+ meant just over 100, and therefore concluded that ROMANÓV is not a common surname, but rather a rare one. It noted the "Baik" decision, wherein a surname with 456 listings was found to be an "extremely rare surname."
Applicant Hyman contended that ROMANÓV is not merely a surname because it is a name of historical significance, identifying the House of Romanov, the imperial dynasty that ruled Russia from 1613 to 1917. The examining attorney maintained that ROMANÓV has "no dictionary meaning" and no significance other than as a surname, and further that its reference to the Russian dynasty merely increases the likelihood that consumers would see the word as a surname.
The Board pointed out that the Examining Attorney's own evidence included dictionary definitions of "Romanov," referring to the Russian ruling dynasty.
Simply put, the term ROMANÓV has significance apart from a surname as the designation of the Russian imperial dynasty. This is especially true when considered within the context of Applicant’s identified goods, ... items associated with royalty, and in particular the Romanov imperial dynasty.
The Board observed that no one associated with applicant has the surname ROMANÓV, and that the term has the look and sound of a surname, in particular a Russian surname.
Concluding that the PTO had failed to demonstrate that the applied-for mark is primarily merely a surname, the Board reversed the refusal.
Judge Seeherman, concurring, would have treated ROMANÓV as an extremely rare surname, and on that basis alone would have reversed the refusal. Judge Seeherman's position on Section 2(e)(4) remains consistent with her concurrence in In re Joint-Stock Company "Baik", 84 USPQ2d 1921, 1924 (TTAB 2007), in stating that the purpose behind Section 2(e)(4) is to keep surnames available to those who wish to use their own names. If a surname is extremely rare, she reasoned, it is also extremely unlikely that someone other than applicant will want to use the surname for the goods or services of the applicant. [TTABlogged here].
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TTABlog note: Do you think that most Americans ever heard of the ROMANÓV dynasty? How about most Americans interested in purchasing decorative eggs?
Text Copyright John L. Welch 2014.