Monday, September 25, 2017

Precedential No. 28: TTAB Affirms Surname Refusal of OLIN, Rejects Transfer of Acquired Distinctiveness under 2(f)

The Board affirmed a Section 2(e)(4) refusal of the applied-for mark OLIN for certain chemical products, finding the mark to be primarily merely a surname and lacking in acquired distinctiveness under Section 2(f). Although the application was filed under the intent-to-use provisions of Section 1(b), the Board ruled that acquired distinctiveness could be transferred to the involved mark under Trademark Rule 2.41(a) in the same manner as with a use-based application. In re Olin Corporation, Serial No. 86651083 (September 22, 2017) [precedential] (Opinion by Judge Susan J. Hightower).


Under Section 2(e)(4), a mark is barred from registration if it is primarily merely a surname. Applicant appeared to argue that OLIN is not "primarily" merely a surname because it has acquired distinctiveness. The Board, however, pointed out that the question of whether a mark is primarily a merely a surname is a question separate from whether the mark has acquired distinctiveness. The Lanham Act makes it clear that a mark that is inherently primarily merely a surname may nonetheless be registered upon a showing of acquired distinctiveness. As stated by Professor McCarthy:

The statutory word “primarily” refers to the main significance of a word as a word, not to its significance as a trademark due to advertising and promotion. MCDONALD’S for quick service restaurants was found to be “primarily merely a surname” even though it has achieved trademark significance. Secondary meaning under § 2(f) must always be submitted on the record to register such a surname as a mark.

In short, "[a] term’s secondary meaning does not necessarily mean second in importance or significance but, merely, second in time." In re McDonald’s Corp., 230 USPQ 304. 307 (TTAB
1986)

The Board has repeatedly rejected the argument that acquired distinctiveness eliminates surname significance under Section 2(e)(4). An applicant must make a formal claim under Section 2(f) in order to overcome a Section 2(e)(4) refusal.

Here, Applicant Olin did not explicitly request registration under Section 2(f). Nonetheless, Examining Attorney Tasneem Hussain construed its arguments in response to the Section 2(e)(4) refusal as an apparent claim of acquired distinctiveness in the alternative.

Section 2(e)(4): The Board considered the factors set out in In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) in determining whether OLIN is primarily merely a surname.

Based on evidence showing that several thousand individuals in this country have the surname OLIN, the Board found that it is "not rarely encountered as a surname, and therefore it is likely to be perceived by the public as having surname significance."

According to its website, Olin Corporation was founded by Franklin Olin in 1892, and his two sons took over the company from him decades later. Applicant stated that no one named Olin is currently in upper management at the company. The Board concluded that, since applicant still promotes its founding by Mr. Olin, this factor favors a finding that the public perceives OLIN as primarily merely a surname. See In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1722 (TTAB 2016).

So-called "negative dictionary evidence" submitted by the examining attorney demonstrated an absence of any non-surname meaning for OLIN. Finally, the Board found that OLIN has the structure and pronunciation of a surname, although this finding has "little significance" in view of the other evidence.

The Board concluded that the evidence, taken as a whole, established that OLIN is primarily a surname.



Section 2(f): The Board observed hat an applicant "can establish a prima facie case of acquired distinctiveness in the mark in an intent-to-use application where it can show that same mark acquired distinctiveness for sufficiently similar or related goods, and that this acquired distinctiveness will transfer to the goods specified in the application when the mark is used in connection with them."

The Board ruled that for a Section 1(b) application, as with a use-based application under Section 1(a), there are three methods for  establishing that a mark has acquired distinctiveness for goods sufficiently similar or related to those identified in an intent-to-use application. Trademark Rule 2.41(a)  provides that distinctiveness may be proven under Section 2(f) by the following means:
  1.  Ownership of prior registration(s);
  2.  Five years substantially exclusive and continuous use in commerce; and/or
  3.  Other evidence  (declarations, etc.).
Applicant Olin pointed to its ownership of several existing and expired registrations for the same mark for other products, the registrations having issued on the Supplemental Register or on the Principal Register under Section 2(f). [The Board, not surprisingly, noted that the expired registrations were irrelevant]. The question, then, was whether the goods of the prior existing registrations were "sufficiently similar or related" to the goods of the subject application to allow "transfer" of the acquired distinctiveness of the former to the latter.

We emphasize that, by the very nature of the inquiry, Section 1(b) applicants face a heavy burden in establishing that their mark will acquire distinctiveness when use commences. Accordingly, the required showing for acquired distinctiveness to “transfer” to new products is a rigorous one.

The goods of the involved application involved various chemicals, including acids, resins, and solvents, while those of applicant's prior registrations are "cartridges and high explosives," "non-ferrous metals and alloys," "ammunition" and "shotguns." The Board found it "self-evident" that the goods of the registrations are unrelated to those identified in the application, and applicant did not disagree.

Putting aside the prior registrations, the Board next considered whether Applicant Olin "made a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with sufficiently similar or related goods under Rule 2.41(a)(2)." Applicant submitted two declarations, stating that Olin is a well-known company whose stock is traded on the New York Stock Exchange, with revenues exceeding $2 billion annually. It maintained that the mark OLIN has been used with its "Historic Products" - chlorine, hydrochloric acid, potassium hydroxide, sodium hydroxide, sodium hypochlorite, hydrogen, and sodium chloride - for at least five years. The Board noted that some of these Historic Products are included in the identification of goods of the application at issue, but it also observed that applicant made no attempt to divide out these goods into a separate application.

In any case, applicant's claim under Rule 2.41(a)(2) was inadequate because Olin failed to aver that its use of the mark OLIN for these "historic" goods had been "substantially exclusive," as required by the Rule.

Finally, turning to Rule 2.41(a)(3), the Board looked to Olin's "other evidence" of acquired distinctiveness and found it insufficient. The Board noted that applicant did not provide evidence of advertising expenditures, survey results, media recognition, or third-party recognition. Applicant's declarations did address sales and length of use, but specifics were not included: the declarations did not specify how long applicant has used the mark OLIN mark with chlorine or any of the other Historic Products, or what portion of the sales of those products occurred in the United States.

Conclusion: The Board therefore found that applicant’s mark is primarily merely a surname, and further that Olin failed to establish acquired distinctiveness under Section 2(f). And so the Board affirmed the refusal to register.

Concurrence: Judge Angela Lykos concurred in the result, but only under Rule 2.41(a)(1).

While the language set forth in Trademark Rule 2.41(a)(1) which makes no mention of use in commerce, and Federal Circuit precedent supports the principle that a “transfer” of acquired distinctiveness may occur from a previously registered mark to an intent-to-use application, I disagree that this tenet extends to either the second or third manner of demonstrating acquired distinctiveness as set forth in subsections (2) and (3) of Trademark Rule 2.41(a).

Furthermore, Judge Lykos further opined that, in her view, based on the plain language of these subsections - "which clearly contemplate prior use of the applied-for mark and make no mention of 'the same mark' or 'sufficiently similar goods or services'" - Rules. 2.41(a)(2) and Rule 2.41(a)(3) are not applicable to intent-to-use applications.

Read comments and post your comment here.

TTABlog comment: The Board stated that it was affirming the refusals (plural) under Section 2(e)(4) and Section 2(f), but I do not believe that Section 2(f) is a basis for refusal. I think it is just a way of overcoming a refusal made under some of the other sub-sections of Section 2. Judge Lykos thinks so too.

Text Copyright John L. Welch 2017.

2 Comments:

At 5:11 PM, Anonymous Anonymous said...

You are correct in pointing out the error in the Board's statement that it was affirming the refusal under Section 2(f). "Section 2(f) is not a provision on which registration can be refused." In re Capital Formation Counselors, Inc., 219 U.S.P.Q. 916, 917 n.2 (T.T.A.B. 1983). What's more, that case is cited in the TMEP for that proposition and any attorney who's been at the office for more than a few years knows this. It's a minor slip in the grand scheme of things, but still, it's disconcerting to see it in a precedential decision that has been vetted.

 
At 5:14 PM, Anonymous Robert Frank said...

So often it seems, especially in cases dealing with alleged fame or secondary meaning, we see that "The Board noted that applicant did not provide evidence of advertising expenditures, survey results, media recognition, or third-party recognition." I don't understand how seemingly knowledgeable and experienced attorneys keep skipping these critical information tidbits upon which the TTAB so often relies. It is mind boggling. If they do provide some of the information they tend to not put it in context. Just saying that you did $2 billion in sales doesn't mean a whole lot to the TTAB. You have to show that in your industry (context) $2 billion puts you at the top.

 

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