Precedential No. 9: TTAB Affirms Surname Refusal of BELUSHI'S for Travel and Restaurant Services

In another decision downplaying the surname rareness factor, the Board affirmed a Section 2(e)(4) refusal of the mark BELUSHI'S for various travel, hotel, and restaurant services, finding it to be primarily merely a surname. Although BELUSHI is an "exceedingly rare" surname (only five people in the U.S. are named BELUSHI), "the celebrity of John Belushi and the continuing media attention on Jim Belushi support a finding that a substantial portion of Americans know BELUSHI to be a surname." In re Beds & Bars Limited, 122 USPQ2d 1546 (TTAB 2017) [precedential] (Opinion by Judge Quinn).

John Belushi
Examining Attorney Ronald L. Fairbanks submitted Lexis/Nexis evidence showing BELUSHI to be a surname (5 listings from Lexis/Nexis). There was no evidence that BELUSHI has a meaning other than as a surname, nor that anyone connected with Applicant has the surname BELUSHI. The inclusion of the apostrophe was a "contextual clue" that the BELUSHI is a surname.

Applicant focused on the rarity of the surname, arguing that "because there are only five people in the entire United States with the surname Belushi, substantially no one will be adversely affected by the registration of Applicant’s mark BELUSHI’S." [Note that this is the approach to Section 2(e)(4) espoused by former TTAB Judge Seeherman]. The Examining Attorney pointed to the fame and publicity of the Belushi brothers, John and Jim, in the television and film industries, which greatly increases the public’s awareness of BELUSHI as a surname.

The Board observed that that "[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname." It found that BELUSHI "is so well-known as a result of media publicity that it would be immediately recognized as a surname."

The relevant question is not simply how frequently a surname appears, however, but whether the purchasing public for Applicant’s services is more likely to perceive Applicant’s proposed mark as a surname rather than as anything else. How frequently it has been exposed to the purchasing public as a surname, thereby causing consumers to recognize it as such, is also of relevance in this case.

The Board found this case to be similar to In re Gregory, 70 USPQ2d 1792 (TTAB 2004), wherein the mark ROGAN was found to be primarily merely a surname in view of substantial media exposure of individuals with that surname, including Baseball Hall of Famer Wilber Rogan, author Barbara Rogan, actors Seth Rogan and Joe Rogan, and former Congressman and USPTO Director James Rogan. There, the Board concluded that "the name [Rogan] may be rare when viewed in terms of frequency of use as a surname in the general population, but not at all rare when viewed as a name repeated in the media and in terms of public perception." Id. at 1795.

Applicant contended that In re Pyro-Spectaculars Inc., 63 USPQ2d 2022 (TTAB 2002) was more to the point. There, the Board reversed a surname refusal of SOUSA for fireworks and related entertainment services, based on evidence of the continuing fame and notoriety of the historical band leader and composer John Philip Sousa for his patriotic music, and on the fact that fireworks and shows featuring pyrotechnics are the types of goods and services that potential purchasers would associate with patriotic events, figures, and music. The Board consequently found that the primary significance of SOUSA, when used in connection with fireworks and related services, was as the name of a person well known in United States history for his patriotic music.

Here there was no evidence that John and Jim Belushi qualify as historical figures associated with the services identified in the application at issue.

Jim Belushi
And so the Board concluded that BELUSHI'S is primarily merely a surname, and it affirmed the Section 2(e)(4) refusal.

Barcelona
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TTABlog comment: During prosecution, applicant included an alternative amendment to the Supplemental Register, which the USPTO accepted, and so the mark BELUSHI'S will be registered in due course (and will not be published for opposition). Use in the USA is not required because applicant has an issued EU registration. If this mark were used in the USA, would problem arise under the right of publicity laws?

Note that a mark registered on the Supplemental Register without use in the USA is a paper tiger. Is there any way that Bayer v. Belmora could be stretched to provide some kind of rights under the Lanham Act to this applicant?

Text Copyright John L. Welch 2017.