Not Precedential: TTABlog Test - Is WEALE Primarily Merely a Surname for Body Care Products?

[The Board mistakenly labeled this opinion PRECEDENTIAL, but corrected the mistake]. The USPTO refused to register the proposed mark WEALE for various body care products, deeming the mark to be primarily merely a surname under Section 2(e)(4). Database and website evidence identified fewer than 150 individuals with the surname WEALE, leading the Board to find WEALE to be a "rare surname." No one associated with the applicant has that surname. There was no probative evidence that the word has a non-surname meaning. The Board found that WEALE has the structure and pronunciation of a surname. So, how did this appeal come out? In re Weale Care, LLC, Serial No. 90756950 (September 26, 2023, amended opinion September 28, 2023) [not precedential] (Opinion by Judge Wendy B. Cohen).

In assessing a Section 2(d) refusal, the Board considers the so-called Benthin factors (In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995)): 

• Whether the surname is rare;
• Whether anyone connected with the applicant has that surname;
• Whether the term has any recognized meaning other than as a surname e.g., an “ordinary language” meaning; and 
• Whether the term has the structure and pronunciation of a surname.

Examining Attorney Christina Sobral relied on data from the LexisNexis surname database and on several webpages referencing individuals with the surname WEALE. The Board, after weeding out duplicates and individuals outside this country, found fewer than 150 relevant references and it therefore dubbed WEALE a rare surname. 

While the fact that WEALE appears to be a rare surname weighs somewhat in Applicant’s favor, it does not end the inquiry. The statutory provision makes no distinction between rare and commonplace surnames.

The USPTO did not dispute the applicant's assertion that no one associated with applicant has the surname WEALE.

As to non-surname meanings, the applicant pointed to as dictionary entry stating that “weal” is the phonetic equivalent of “weale” and has a recognized meaning of a “happy or prosperous state that is aligned with [Applicant’s] branding.” The Board was unimpressed. "There is no evidence of record that indicates these meanings are readily recognized by the average consumer. It is not enough for Applicant to uncover a dictionary reference for the term in question."

Finally, Applicant argued that WEALE does not have the "structure and sound of a surname," but it offered no evidence on this point. [What would the evidence look like? - ed.]. The Examining Attorney likewise offered no evidence or argument on this point.

Nonetheless, we find that WEALE has the structure and pronunciation of a surname as it “would not be perceived as an initialism or acronym . . . and does not have the appearance of having been coined by combining a root element that has a readily understood meaning in its own right with either a prefix or a suffix.” In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004). In short, WEALE sounds like a surname with the structure or format of a surname.

Seemingly placing the burden of proof on the applicant, the Board concluded:

While WEALE may be rarely encountered as a surname it possesses the structure and pronunciation of one, and there is insufficient evidence on this record of a recognized non-surname significance of the term. Thus, we cannot find, based on this record, that its rarity removes WEALE from being primarily merely a surname.

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TTABlogger comment: A strange decision, yet precedential. [Not any more. See corrected opinion]. Shouldn't the applicant be given the benefit of the doubt, given the lack of evidence provided by the Office?

Text Copyright John L. Welch 2023.