TTAB Test: Is VALETTE (for clothing) Primarily Merely a Surname?

The USPTO refused registration of the mark VALETTE for various clothing items, deeming the mark to be primarily merely a surname under Section 2(e)(4). The Examining Attorney found 236 individuals with that surname, in the Leis Nexis database, and 33 news items referring to 17 such individuals. How do you think this came out? In re Nordstrom, Inc., Serial No. 86303016 (March 12, 2016) [not precedential].

Applicant Nordstrom submitted a search of whitepages.com, indicating there are 223 people with the surname VALETTE. The Board, considering the great size of the databases relied on by applicant and the PTO, found that VALETTE is "an extremely rare surname." The Board (by Judge Seehermann) cited In re Etablissements Darty et Fils:

In In re Etablissements Darty et Fils, ... the Federal Circuit acknowledged that, even though a term might be, indisputably, a surname, it might still be perceived by the relevant public as something else, including “an arbitrary term,” 225 USPQ at 653, thereby removing it from the prohibition of Section 2(e)(4). In this case, the extreme rarity of the surname VALETTE strongly suggests that few persons in the relevant market would know, or know of, a person named VALETTE.

The 33 news items were unlikely to have a substantial impact on the public's awareness of the surname, and the few individuals who were mentioned more than once do not seem to enjoy and particular notoriety.

The examining attorney submitted negative dictionary evidence [white print on black paper? - ed.], showing that VALETTE has no meaning other than as a surname. Nordstrom pointed to the commune Valette in south-central France. The Examining Attorney pointed out that Valette has a population of 262, located 247 miles from Paris and 42 miles from Auvergne. The Board found this evidence insufficient to show that VALETTE has a geographic significance that is the word's primary meaning.

The Board therefore concluded that VALETTE is so rare a surname that consumers would be unlikely to perceive it as a surname, but instead would view it as a coined, fanciful term with no specific meaning. And so the Board reversed the refusal.

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TTABlog comment: Judge Seeherman usually likes to consider the surname refusal from the perspective of how many individuals are likely to want to use the term at issue as a trademark. If there are only 200 or so people with the surname, the likelihood that one of them wants to use the surname as a mark for certain goods or services is small. See the concurrence in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007) [precedential].

Text Copyright John L. Welch 2016.