Wednesday, September 12, 2007

Precedential No. 56: TTAB Reverses Surname Refusal of "BAIK" for Vodka

The Board reversed a Section 2(e)(4) refusal to register the mark BAIK for vodka, finding that the PTO Examining Attorney had failed to establish a prima facie case that BAIK is primarily merely a surname. In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007) [precedential].

Based upon the PTO's evidence, essentially comprising 456 hits from a Verizon database, the Board found BAIK to be an "extremely rare surname," with no evidence that anyone with that surname has achieved any notoriety. Applicant confirmed that no one connected with it has the surname BAIK.

As to other meanings of the term, the PTO pointed to "negative dictionary evidence," while Applicant argued that BAIK "is an arbitrary Russian sounding word mark" that sounds "similar to Baikal, a Russian lake in Siberia" and to "the Baikal mountain range in Siberia." It noted that BAIK is promoted along with the words "VODKA Siberia," and urged that the public sees BAIK as a "fanciful Russian term used in a trademark sense." The Board agreed with Applicant.

Finally, the PTO oddly argued that because the mark "does not have any primary recognition other than as a surname," it therefore has the look and feel of a surname. The Board rejected that contention, instead noting the lack of evidence that BAIK resembles other common surnames in structure and pronunciation. The Examining Attorney pointed to the surname PAIK (800 individuals) and NAIK (900), and BAK (1100), but those surnames are almost as rare as BAIK. The Board was not convined that "the similarity of Baik to other obscure surnames somehow results in Baik having the 'look and feel' of a surname."

The Board therefore reversed the refusal.

In a rare concurring opinion, Judge Seeherman made a significant point regarding the "look and feel" factor. She opined that registration should not be refused just because a mark "is similar in sound or appearance to other surnames."

"The purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames, as though there were something offensive in viewing a surname. Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses ...."

Therefore, the fact that the public may view a mark as having the "look and feel" of a surname should not be a basis for refusal of rare surnames. "If the surname is extremely rare, it is also extremely unlikely that someone other than the applicant will want to use the surname for the same or related goods or services as that of the applicant."

Whether the surname at issue rhymes with another surname or differs from another surname by a letter or two should not be decisive on the issue of registration. In short, "[i]nterpreting the 'look and feel' factor to refuse registration of marks simply because they are similar to recognized surnames does not serve the intention of the statute."

TTABlog comment: Taking Judge Seeherman's observations regarding the purpose of Section 2(e)(4) one step further, does it make any difference whether someone with the surname BAIK, or any other rare surname, has achieved notoriety? If the question is not whether the public would recognize the word as a surname, but rather whether a lot of people have that surname, it shouldn't make any difference if one person with that surname has achieved some renown. So does the Board's 2004 precedential decision in In re Gregory, 70 USPQ2d 1792 (TTAB 2004) make sense? There the Board deemed the mark ROGAN to be primarily merely a surname, based in large part on the notoriety of former PTO Commissioner James Rogan, and in spite of a mere 1,100 telephone listings for individuals with the surname "Rogan." In other words, who cares if there is (or was) one notorious Rogan? The question should be: how many Rogans are there that might want to use their own surname as a trademark?

TTABlog note: Last year, this same Applicant failed in its attempt to register BAIKALSKAYA for vodka, the Board finding the mark to be primarily geographically descriptive. (TTABlogged here).

Text Copyright John L. Welch 2007.


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