Thursday, March 29, 2007

Precedential No. 24: TTAB Rejects Historical Figure Contention, Affirms Surname Refusal of "WATSON"

In its two dozenth precedential decision of 2007, the Trademark Trial and Appeal Board affirmed a Section 2(e)(4) refusal to register the mark WATSON for "computer software for use in laboratory information management ...," finding it to be primarily merely a surname. Applicant argued that WATSON would primarily connote James Dewey Watson, one of the discoverers of the structure of the DNA molecule, but the Board was not persuaded that the relevant purchasing public would consider Watson to be such "an historical figure" that they would "view the primary connotation of WATSON as James Dewey Watson." In re Thermo LabSystems Inc., 85 USPQ2d 1285 (2007) [precedential].

James Dewey Watson

Examining Attorney Doritt Carroll established a prima facie case that the primary significance of WATSON to purchasers is merely that of a surname. The PTO's evidence showed more than 81,00 residential listings for, and more than 250,000 individuals with, the surname WATSON. In fact, it is the 72nd most common surname in the country.

Moreover, WATSON has the "look and feel" of a surname. Numerous individuals have that surname, and several such persons "are notable in view of their professional accomplishments." [E.g., the aforementioned James D. Watson, Congresswoman Diane Watson, and actress Emma Watson].

Applicant contended that WATSON has a "myriad of meanings": as the name of one or more historical figures, as a given name, and as a geographic location." Its "large amount of evidence," however, was not persuasive.

As to the historical figure argument, Applicant primarily maintained that those in need of its software would quickly associate WATSON with James Dewey Watson. Not so fast, said the Board. Nothing in the record established that his achievements "are so remarkable or so significant that he is an historical figure." [Like, for example, Leonaro Da Vinci].

Applicant also listed numerous other "famous" Watsons -- e.g., Thomas Augustus Watson, assistant to Alexander Graham Bell, and professional golfer Tom Watson -- but again the evidence did not show these individuals to be "historical figures" to prospective purchasers of Applicant's goods.

Concerning the "given name" argument, the Board found Applicant's evidence to be "vague" and "not reviewed or accurately tallied." In any case, the number of individuals with that given name "would appear to be far lower than the number of surname uses." Moreover, none of the individuals with the given name "Watson" appear to have any significance in any particular field.

As to the geographic argument, Applicant submitted evidence that geographic locations in 24 states bear the name Watson (including Watson, Missouri (population 137)). Most of the entries did not indicate the population size, and those that did showed very small ones. Even if WATSON has some minor geographical significance, the Board observed, that does not dissipate its primary significance as a surname; indeed many places are named after people.

Therefore, although the record showed that WATSON "has some geographical and given-name significance," the surname significance "is far more common and ... predominates."

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Text Copyright John L. Welch 2007.


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