TTAB Test: Is "FERET" Primarily Merely a Surname?

The USPTO refused registration of the mark FERET under Section 2(e)(4), finding it to be primarily merely a surname when use in connection with "Precious metals and their alloys and goods made from these materials included in this class, namely, statues and statuettes of precious metal and their alloys, boxes of precious metal; holiday ornaments of  precious metal; precious knobs and pulls; timepieces and chronometric instruments; watch cases; watch straps; watch dials; chronometers; watches; jewelry watches; watches made of precious metals or coated  therewith; wristwatches; watch movements; movements for watches; watch parts." Applicant argued that FERET is a rare surname with limited public exposure or notoriety, and that no person associated with applicant has that surname, while the Examining Attorney maintained that even rare surnames may be unregistrable. How do you think this came out? In re Carlo Ferrara SA, Serial No. 79162222 (August 25, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma).

The Board once again considered the factors set forth in In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995).

Contextual clues: The Examining Attorney conceded that there was no evidence that anyone connected to Applicant has the surname FERET, and so this factor was neutral.

Non-surname meaning: The Board found that FERET has no ordinary language meaning, though it appears as an acronym in several specialized fields. However, there was no evidence that those acronyms had any widespread recognition.

Rareness: The surname FERET appears 375 times in the LEXIS/NEXIS surname database, and it ranks as the 54,269th most common surname in the U.S.  The Examining Attorney contended that even the most common surname would represent only a small fraction of a surname database. And even a rare surname may be unregistrable if it has been broadly exposed to the public. The Examining Attorney pointed to a handful of individuals with the surname FERET, but none of them had any notoriety. Applicant argued that "There are only ordinary references to one of the 300-400 people in the U.S. that has this name, such as a person’s online professional biography, a film credit, or a high school sports story." The Board was not impressed with the USPTO's evidence:

Although the record shows that FERET is a surname having 375 listings, there is very little evidence of media attention or publicity of persons having that surname. Moreover, there is no showing of any widely recognized public personalities with that surname. Thus, FERET has not been shown to have broad public exposure.

Structure and Pronunciation: The Examining Attorney pointed to surnames that share a prefix or suffix with FERET, such as FORET, FERRETTE, and FERRAT, but the Board pooh-poohed that effort: "without evidence of the uniqueness or recognition of such prefixes or suffixes as part of surnames, there is little association or correlation between those surnames and Applicant’s mark, rendering such evidence to be of little value."

Applicant contended that the term FERET is “most structurally and phonetically similar” to the word “ferret,” the name of an animal. The Examining Attorney argued that FERET would be pronounced with a long "A," like Monet or valet, but the Board pointed out that there is no correct spelling as a correct or proper spelling of a trademark. [How about "Black Cat" for firecrackers? - ed.]. Noting that this factor is highly subjective, the Board found the evidence insufficient to support a conclusion that FERET has a structure and pronunciation similar to that of other purportedly common surnames.

Conclusion:

Based on the evidentiary record showing that FERET has limited public exposure or notoriety as a surname in the social media references cited by the Examining Attorney and no contextual clues regarding any limited surname significance in the way Applicant actually uses the term, the record falls short of showing by substantial evidence that consumers would be likely to perceive FERET as primarily merely a surname.

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TTABlog comment: If a surname clears the first hurdle  - i.e., no one associated with applicant has that surname - then the notoriety factor now seems to be dispositive in these 2(e)(4) cases.

Text Copyright John L. Welch 2017.