TTAB Test: Is BOLAN for Musical Instruments Primarily Merely a Surname?
The USPTO refused registration of the mark BOLAN for musical instruments, piano benches, recording systems, and related management and repair services, finding the mark to be primarily merely a surname under Section 2(e)(4). The name "Bolan" appeared 455 times in a public record database. How do you think this came out? In re Grand & Piano Parts Distribution B.V. Serial No. 85946217 (March 31, 2015) [not precedential].
The Board applied its standard Benthin test, looking to the rareness of the surname, any connection of the surname with someone associated with applicant, other meanings, and the "look and feel" of the term.
The examining attorney provided a database listing in which the surname BOLAN appeared 455 times. There was no showing that anyone named BOLAN had achieved wide renown or publicity. The Board concluded that BOLAN is "an extremely rare surname."
There was no evidence that anyone named "Bolan" was associated with applicant. The Examining attorney produced "negative dictionary evidence" from a single dictionary, and the Board found that this factor "very slightly" favored the PTO's position.
As to "look and feel," the examining attorney maintained that BOLAN is similar to other surnames found on a genealogy website: Boland, Boling, Bolin, and Boylan, but the Board noted that each name appeared only once. Due to the dearth of evidence, the Board was unable to make a definitive determination regarding this factor.
Bearing in mind that any doubt must be resolved in favor of the applicant, the Board found that BOLAN, "largely due to its rareness," is not primarily merely a surname.
And so the Board reversed the refusal.
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TTABlog note: Half a century ago, the Red Sox had a shortstop named Milt Bolling, whose brother Frank played for the Tigers, if I recall correctly. Frankly, Bolan looks like a surname to me.
Postscript: a loyal FOB recalled the late Marc Bolan of T-Rex.
Text Copyright John L. Welch 2015.
posted by John L. Welch @ 4/09/2015
5 comments
5 Comments:
Guess there's no T-Rex fans at the TTAB.
Not sure how Marc Bolan isn't considered to have achieved wide publicity. His songs still get played on the radio. He was even good friends with Ringo. If that's not famous, I don't know what is.
Bang a gong get it on...
The examining attorney looks he spent a lot of time getting evidence, but he has remarkably little for his effort -- directory listing, a single dictionary search, and examples of individuals named Bolan. How he missed Marc Bolan I cannot guess. But I did a Google search for BOLAN, and Marc Bolan dominated the top results and merited a separate box.
I wish that examining attorneys would use two resources more when issuing surname refusals.
The first is the Census Bureau's frequently occurring surname database. It has a spreadsheet with all surnames occurring 100 or more times. In this case, BOLAN is the 13748th most common surname in the U.S. with 2021 individuals bearing that name and occurring at frequency of 0.75 per 100,000. We are reasonably sure that the 2021 figure represents discrete individuals. It also has the advantage of not disclosing individuals' addresses as his evidence did.
The second is www.onelook.com, which searches across several online dictionaries, Wikipedia, and the Urban Dictionary. It basically would have confirmed that BOLAN has no meaning in English except to the extent that it functions as a surname, albeit a rare one.
I've only read this summary of the case but Robert's evidence sounds pretty compelling supporting a surname refusal. Without that evidence, however, this examiner comes across as a "refusenik" with no solid basis for the surname refusal.
My recollection of the recent TTAB cases on this issue is that any evidence showing less than a thousand occurrences of the surname at issue in the U.S. is likely to be held insufficient to show surname significance unless the examiner can demonstrate surname significance in some other manner, i.e. having an association with the applicant; belonging to a famous person, etc.
So without the evidence that Roberts presented, I fail to understand why the examiner would have maintained this refusal.
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