Tuesday, June 04, 2019

TTAB Reverses Section 2(e)(4) Surname Refusal of SIRON for Computer Software

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] In a rather surprising decision, the Board reversed a Section 2(e)(4) refusal to register SIRON for, inter alia, computer software. The Examining Attorney initially rejected the mark as primarily merely a surname, citing several search results and other online sources as evidence. Applicant, Fair Isaac Germany GmbH, timely appealed and requested reconsideration. After the Examining Attorney denied Applicant’s request for reconsideration, the Board resumed the appeal. Following an analysis of the oft-cited Benthin factors, the Board reversed the refusal to register. In re Fair Isaac Germany GmbH, Serial No. 87424333 (May 28, 2019) [not precedential] (Opinion by Judge Jonathan Hudis).


Extent to Which SIRON is Encountered as a Surname:

The Examining Attorney’s cited evidence demonstrated use of SIRON as a surname in the United States merely 523 times. In light of the total quantum of evidence, the Examiner conceded that SIRON is relatively rare. Finding no evidence of record demonstrating that SIRON is the surname of a well-known person (See In re Beds & Bars Limited, 122 USPQ2d 1546 (TTAB 2017) (BELUSHI found to be primarily merely a surname)), the Board concluded that this evidence weighed in favor of finding that SIRON is not primarily merely a surname.

Whether SIRON is the Surname of Anyone Connected with Applicant:

Fair Isaac asserted that “[n]o one connected with Applicant bears SIRON as a surname.” Nonetheless, the Board found this factor to be neutral since it is not controlling whether someone named SIRON is associated with the Applicant. Instead, the analysis should focus on whether SIRON would be perceived as a surname.

Whether SIRON has any Recognized Meaning Other than as a Surname:

The Examining Attorney cited multiple online sources showing that SIRON had no recognized meaning in English. While Applicant conceded that SIRON has no recognized non-surname meaning, it claimed, without evidentiary support, that the mark would likely “be recognized as a coined term or viewed as a play on the word ‘siren’ to suggest a sense of urgency and alertness associated with ‘siren’ when viewed in connection with the goods and services Applicant offers in the field of anti-fraud and anti-money-laundering.”

Whether SIRON has the Structure and Pronunciation of a Surname:

To support his argument, the Examining Attorney claimed that SIRON is more similar to the surnames “Sirun” and “Seron” than a recognized word such as “siren.” However, the Board rejected this argument due to the fact that “Sirun” and “Seron” are even less prevalent surnames in the United States than SIRON. Therefore, the Board found this factor neutral at best.

Whether the Stylization of Lettering of the Applied-For Mark is Sufficiently Distinctive to Create a Separate Commercial Impression:

Because SIRON is a standard character mark, this Benthin factor was irrelevant in the Board’s analysis.

Conclusion:

After its analysis, the Board doubted whether consumers would likely perceive SIRON as primarily merely a surname despite the lack of evidence that SIRON had a meaning other than as a surname. Because issues of doubt should be resolved in favor of the applicant (In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995)), the Board reversed this refusal to register.

Read comments and post your comment here.

TTABlog comment: Rareness is always a factor in the Section 2(e)(4) analysis, but here it seemed to play the decisive role. This is reminiscent of former Judge Seeherman's concurrence in In re Baik, where she asserted that rareness should be the key factor.

Text Copyright Kira-Khanh McCarthy and John L. Welch 2019.

3 Comments:

At 7:19 AM, Anonymous Anonymous said...

Finally the Board gets a surname case right.

 
At 9:55 AM, Anonymous Anonymous said...

"Whether SIRON is the Surname of Anyone Connected with Applicant"

The board said this factor is "not controlling whether someone named SIRON is associated with the Applicant" on these facts and more or less disregarded that fact. But when the mark is the surname of someone associated with the Applicant, they seem to say it close to controlling.

"Not controlling" should be a two-way street.

 
At 10:46 AM, Anonymous Anonymous said...

The return to reason. FINALLLLLLLLY!

 

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