TTAB Reverses Section 2(e)(4) Surname Refusal of OKAMOTO for Stockings
The Board reversed a Section 2(e)(4) refusal to register OKAMOTO for "leggings; tights; socks; stockings; trousers; panties; shorts and briefs; sock suspenders; leg warmers; arm warmers; thermal underwear; neck warmers; spats; garters; waistbands; slippers; shoes; uniforms; wristbands " finding that the USPTO failed to establish that the mark is primarily merely a surname. The Examining Attorney submitted 739 Lexis listings for the surname "Okamoto" and 33 Internet excerpts referencing persons with that surname, and also pointed to the fact that applicant's president is named Mr. Tetsuji Okamoto. Not good enough, said the Board. In re Okamoto Corp., Serial No. 85739429 (February 6, 2015) [not precedential].
The Board found that the Lexis entries for "Okamoto" did not constitute substantial evidence that the term is a common surname. In fact, it supported the finding that the term is a "relatively rare surname" in this country. That, however, does not necessarily mean that the term would not be considered primarily merely a surname.
The Internet excerpts referenced actress Tao Okamoto, Sandra Okamoto, a reporter in Columbus; Yoichi Okamoto, President Johnson's personal photographer, golfer Ayako Okamoto; 9-year old Ryan Okamoto; and several other individuals. The examining attorney contended that these excerpts demonstrated that "Okamoto" is not rare and would be perceived as a surname, but the Board was not impressed, observing this evidence does not "reflect the type of use that would outweigh the relative rareness of the surname."
The Board noted applicant's concession that its president is named "Okamoto," but it deemed irrelevant applicant's argument that the average consumer would not know that, since the Section 2(e)(4) test does include such a requirement.
As to whether "okamoto" has any non-surname significance, the record was unclear. The term has no official Japanese translation as a word, but "oka' means "hill," and "moto" means a "base." [Query: would the average American consumers know that? - ed.]
As to "look and feel," the Board was unable to tell whether the term looks and feels like a surname. [Feels like a surname to me - ed.].
Noting that the rarity of the surname is of particular importance in the Section 2(e)(4) analysis, the Board concluded that the USPTO had failed to carry its burden of proof, and so it reversed the refusal.
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TTABlog note: I like the reliance on "rareness" as the most important factor. As to "look and feel," looks aren't everything, and how do you "feel" a surname?
Text Copyright John L. Welch 2015.
posted by John L. Welch @ 2/11/2015
4 comments
4 Comments:
I "feel" like the Board has relied on less than 739 references to a surname to find a surname common and with that primary meaning in previous cases. Maybe in those cases the references derived from a phonebook database instead of a news database like Lexis/Nexis. Either our population has grown so much that 739 references is no longer significant, or the Board's threshold for this measure really slides a lot.
I think the Japaneseness of the name stumped the Board.
So, we're now approaching the death of the 2e4, right? Not necessarily opposed but if rareness is all that matters, what would still count as a surname? Seems that here we'd probably have enough that OKAMOTO is the applicant's surname and has no other meaning.
Hard case to understand. It seems that while Okamoto is in fact a surname, legally,i.e., for trademark purposes, it is not. Strange. It would seem that being the President's last name would be enough, with the additional evidence mere icing on the cake.
I think that the Board got this one right. It may indeed be that the particular mark is a surname, but it seems unlikely that this is the primary significance to the consuming public. I believe that the Examining Attorneys have gone way overboard on rejecting perfectly good marks on flimsy bases such as surname, geographical allusion, and marginal descriptiveness. It is about time that the TTAB took some action on reversing the "you can't come in" culture of recent years.
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