Tuesday, April 21, 2009

Applicant Fails to Prove Historical Significance of "DAIMLER" for Vehicles, TTAB Affirms 2(e)(4) Surname Refusal

Applying its standard Section 2(e)(4) analysis, the Board affirmed a refusal to register the mark DAIMLER for "land vehicles," finding that the PTO had made out a prima facie case that the mark is primarily merely a surname, and that Applicant Jaguar had failed to rebut the PTO's case. Applicant argued that DAIMLER has historical significance that eclipses the marks surname significance because it identifies automobile pioneer Gottlieb Daimler, but the Board found inadequate Applicant's evidence that he is that widely-known. In re Jaguar Cars Limited, Serial No. 77035168 (April 7, 2009) [not precedential].

The Board applied the surname test set forth in In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995). As to rareness, Examining Attorney Eli J. Hellman submitted the results of four different database searches, which showed 77, 744, 54, and 89 entries for the surname DAIMLER. Jaguar objected to this wide range in results, and the Board took a close look, ruling that the 744 figure (Lexis/Nexis) were "duplicative because this database is a group file containing nine types of person locator files." The Board therefore rejected this result and accepted the other three, more consistent results. In light of the fewer than 100 listings for the surname DAIMLER, the Board considered it a rare surname. [TTABlog note: compare the recent BERGFELD case, here, where a completely different Board panel found that BERGFELD was an "extremely rare surname," and reversed the surname refusal primarily on that basis.]

As to the second factor, no person currently associated with Jaguar has the surname DAIMLER. [Gottlieb Daimler founded the German Company, Daimler Motoren Gesellschaft in 1896, and licensed the British firm, Daimler Motor Company, to use the name. Jaguar acquired the British company in 1960.]

The third factor concerns whether the mark has any non-surname significance. The Examining Attorney supplied "negative" dictionary evidence showing no meaning for DAIMLER other than as a surname. Jaguar argued that DAIMLER has historical significance because it identifies Gottlieb Daimler. However, Jaguar's evidence was flimsy: a Wikipedia entry and a Dictionary.com entry.

The Board observed that a name that is "so widely recognized that [it is] almost exclusively associated with a specific historical figure" is not considered as being primarily merely a surname. [E.g., DAVINCI]. Here, however, the Board was not persuaded that Gottlieb Daimler is such an historical figure. Listings in a dictionary and in Wikipedia are "hardly evidence that he is widely-known." The Board concluded that Gottlieb Daimler is at best a "semi-historical" figure and does not eclipse its surname significance.

Gottlieb Daimler

As to the fourth factor, the Board ruled that DAIMLER has the "look-and-feel" of a surname. The existence of others with the name DAIMLER "tends to reinforce the conclusion that DAIMLER has the look and feel of a surname." [TTABlog comment: This seems to be a particularly weak point, since nearly every surname, even if extremely rare, will be shared by at least a few individuals.] Moreover, the surname significance of DAIMLER "will be reinforced by its association with him." And surnames are frequently used as marks for vehicles. [TTABlog comment: Isn't that a reason why DAIMLER would be seen as a mark, and not primarily merely a surname?]

Finally, Jaguar pointed to its already approved application to register DAIMLER for motor vehicles, but the Board was untroubled by this inconsistency. As usual, it cited In re Nett Designs, Inc., 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), for the proposition that each case must be decided on its own record.

In sum, the Board ruled that Jaguar had failed to overcome the PTO's prima facie case of surname significance, and it affirmed the refusal.

TTABlog comment: Obviously, not all of the TTAB judges have bought into Judge Seeherman's revised view of the Section 2(e)(4) surname refusal, first set out in In re "Baik", which gives greatest weight to the name's "rareness" and holds that "look-and-feel" should not be a factor in the PTO's prima facie case. For a discussion, see the BERGFELD posting here.

I guess the bottom line is that we have to keep the DAIMLER name available in case one of the one hundred people in the USA named Daimler wants to go into the automobile manufacturing business.

Text Copyright John L. Welch 2009.


At 6:19 PM, Anonymous Anonymous said...

This is absurd. Anyone who knows automobiles knows that Daimler is one of the oldest British makes and has been part of Jaguar since the late Fifties or early Sixties I believe. It is now essentially a "luxury" version of the standard Jaguar, sort of similar to the fact that Bentley and Rolls Royce for a period were both built off the same basic chassis and body style.

I guess this is why you can't buy a Daimler-badged Jaguar in the U.S.


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