Friday, June 06, 2014

TTAB Reverses Section 2(e)(4) Surname Refusal of ROMANÓV for Decorative Eggs

The Board reversed a Section 2(e)(4) refusal to register the mark ROMANÓV for decorative eggs made of precious metals, jewelry, and picture frames, finding that the mark is not primarily merely a surname. The rareness of the surname "Romanov," coupled with its historical significance as the name of the imperial dynasty that ruled Russia for centuries, convinced the panel majority that the refusal must be reversed. Judge Seeherman concurred in the result, but would have based the ruling solely on the rareness of the surname. In re The Hyman Companies Inc., Serial No. 85483695 (June 4, 2014) [not precedential].

Peter the Great

The Examining Attorney contended that ROMANÓV is a common surname, based on "100+ Results" from the Free Directory Assistance website. The Board assumed that 100+ meant just over 100, and therefore concluded that ROMANÓV is not a common surname, but rather a rare one. It noted the "Baik" decision, wherein a surname with 456 listings was found to be an "extremely rare surname."

Applicant Hyman contended that ROMANÓV is not merely a surname because it is a name of historical significance, identifying the House of Romanov, the imperial dynasty that ruled Russia from 1613 to 1917. The examining attorney maintained that ROMANÓV has "no dictionary meaning" and no significance other than as a surname, and further that its reference to the Russian dynasty merely increases the likelihood that consumers would see the word as a surname.

The Board pointed out that the Examining Attorney's own evidence included dictionary definitions of "Romanov," referring to the Russian ruling dynasty.

Simply put, the term ROMANÓV has significance apart from a surname as the designation of the Russian imperial dynasty. This is especially true when considered within the context of Applicant’s identified goods, ... items associated with royalty, and in particular the Romanov imperial dynasty.

The Board observed that no one associated with applicant has the surname ROMANÓV, and that the term has the look and sound of a surname, in particular a Russian surname.

Concluding that the PTO had failed to demonstrate that the applied-for mark is primarily merely a surname, the Board reversed the refusal.

Judge Seeherman, concurring, would have treated ROMANÓV as an extremely rare surname, and on that basis alone would have reversed the refusal. Judge Seeherman's position on Section 2(e)(4) remains consistent with her concurrence in  In re Joint-Stock Company "Baik", 84 USPQ2d 1921, 1924 (TTAB 2007), in stating that the purpose behind Section 2(e)(4) is to keep surnames available to those who wish to use their own names. If a surname is extremely rare, she reasoned, it is also extremely unlikely that someone other than applicant will want to use the surname for the goods or services of the applicant. [TTABlogged here].

Read comments and post your comment here.

TTABlog note:  Do you think that most Americans ever heard of the ROMANÓV dynasty? How about most Americans interested in purchasing decorative eggs?

Text Copyright John L. Welch 2014.


At 8:18 AM, Anonymous Rebecca Tushnet said...

How could the TTAB have ignored Natasha Romanov, the Black Widow and one of the stars of the Avengers?

At 8:55 AM, Anonymous Tal Benschar said...

Simply put, the term ROMANÓV has significance apart from a surname as the designation of the Russian imperial dynasty.

I find this argument puzzling. The Russian imperial dynasty got its name from the surname of the family who ruled Russia. If anything, this bit of history makes the case for the PTO -- because the most famous use of the term was the family name of the family that ruled Russia for 300 years.

(Put differently, a dynastic name IS a surname, so I don't see how that helps, rather than hurts, the applicant.)

If someone tried to register WINDSOR for some typically British goods (teapots?), shouldn't that be rejected for the same reason?

At 8:59 AM, Blogger John L. Welch said...

Good questions.

At 9:15 AM, Anonymous Freiburger said...


You're right that "a dynastic name IS a surname," but the test is whether to the relevant purchasers it's "primarily MERELY a surname." If consumers view the mark as a reference to a Russian dynasty - specifically, a series of Russian rulers with the surname Romanov - then the consumers are not viewing the mark as primmarily merely a surname.

At 11:20 AM, Anonymous Anonymous said...

Try putting "Smith" into the Free Directory Assistance website. The website will return 100+ results. But, I would not presume that 100+ means just over 100 and Smith is not a common surname.

At 3:27 PM, Blogger Unknown said...

I agree that the connection to the Russian dynasty, which itself is the surname of the ruling family, should weigh in favor of finding that this is primarily a surname. Not sure if it is enough to change the outcome, but it seems the Board found that this tipped the wrong side of the scales.

At 3:57 PM, Anonymous Anonymous said...

Yes, everyone who existed in pre-cable American television remembers the Romonovs because of Anastasia: The Mystery of Anna in 1986.


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