Wednesday, October 05, 2016

Precedential No. 30: TTAB Affirms Section 2(e)(4) Refusal of Rare Surname "ALDECOA"

In another Section 2(e)(4) appeal, the Board again emphasized consumer perception over a more mechanical approach, affirming a refusal to register the mark ALDECOA for coffee, finding the mark to be primarily merely a surname. Although ALDECOA is a rare surname, the term has no other recognized meaning and there is a "strong connection" between the surname and the owners of the application: i.e., the Aldecoa family runs the business. In re Eximius Coffee, LLC, 120 USPQ 2d 1276 (TTAB 2016) [precedential].

Section 2(e)(4): A determination as to whether a mark is primarily merely a surname "can be made only after the primary significance of the mark to the purchasing public is determined ...." In re Kahan & Weisz Jewelry Mfg. Corp., 184 USPQ 421, 422 (CCPA 1975). In In re Etablissements Darty et Fils, 225 USPQ 652, 653 (Fed. Cir. 1985), the CAFC considered several factors in its Section 2(e)(4) analysis, including "whether the applicant adopted a principal's name and used it in a way that revealed its surname significance; whether the term had a nonsurname 'ordinary language' meaning; and the extent to which the term was used by others as a surname." The "Benthin factors" of In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) also may lead to relevant evidence regarding the public's perception of a term's primary significance.

Applicant's website traced the Aldecoa's family history in the coffee business for three generations to the present. Applicant's specimen of use displays the phrase "Premium Family Coffee" and the year "1926," when Carlos de Aldecoa Fernandez founded the family business.

The Board found this evidence regarding the connection of the name to the goods "persuasive of consumer perception of ALDECOA as a surname."

Consumers are exposed to the surname significance prominently on Applicant’s website and packaging. Thus, whether offering its goods online or in the store, Applicant is educating consumers as to the surname significance of ALDECOA. Moreover, Applicant’s website indicates that ALDECOA is not simply the name of the historical founder of Applicant’s business at some time in the past. Rather, ALDECOA identifies individuals who have been continuously involved in the business and presently are active participants in the daily operation and leadership of the company.

The evidence showed that ALDECOA has no recognized meaning other than as a surname, albeit a rare one. "The evidence tends to show that ALDECOA is a surname, but one that is rarely encountered by the consuming public."

Applicant argued that an "extremely rare surname" cannot be primarily merely a surname, pointing to Judge Seeherman's concurrence in In re Human Cos., Inc., a non-precedential TTAB decision [TTABlogged here], for the proposition that the purpose of Section 2(e)(4) is to ensure that other businesses or individuals "can use their surnames in the marketplace." If there are only a few hundred persons with a particular surname, the argument goes, then there is no need to bar registration on the principal register, and no need to look at other factors in the analysis.

The Board was unmoved, pointing out that Section 2(e)(4) does not exempt from its prohibition, surnames shared by only a few or provide that the purpose of this Section it to protect others' rights to use their surnames except for those with uncommon surnames.

The Board concluded that the primary significance of ALDECOA is as a surname. Applicant's association of its goods with the family name was accorded "particular weight," and there was no persuasive evidence that ALDECOA would be perceived as anything other than as a surname. The rareness of the surname and its minimal public exposure in the media are outweighed by applicant's use of ALDECOA as a surname.

Supplemental Register: During prosecution, the Examining Attorney pointed out the possibility of registration on the Supplemental Register if applicant filed an amendment to allege use. After final refusal, applicant filed an amendment to allege use, but it did not request an amendment to the Supplemental Register. However, in its appeal brief, applicant requested that, in the alternative, should the appeal be denied, the application be remanded for amendment to the Supplemental Register.

After the case was fully briefed, the Board sua sponte suspended the appeal and remanded the case to the Examining Attorney for consideration of such an amendment. The Examining Attorney accepted the amendment in the alternative and jurisdiction was then restored to the Board. [Why didn't the Board do this in the BARR GROUP case, TTABlogged two days ago? - ed.].

The Board affirmed the Section 2(e)(4) refusal and directed that the "application be issued on the Supplemental Register."

Read comments and post your comment here.

TTABlog comment: Judge Seeherman's view of Section 2(e)(4), now relegated to the TTAB dustbin, was articulated in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007). [TTABlogged here].

Text Copyright John L. Welch 2016.


At 9:34 AM, Anonymous Anonymous said...

I thought it was a division of ALCOA.

At 1:02 PM, Blogger John L. Welch said...

I accidentally deleted a comment that I meant to publish, which called tis decision ridiculous. Please re-submit.

At 12:56 PM, Anonymous Anonymous said...

I am one of the attorneys that helped prosecute this ex parte appeal. You note correctly that "[a]fter the case was fully briefed, the Board sua sponte suspended the appeal and remanded the case to the Examining Attorney for consideration of such an amendment." The amendment was quickly accepted and returned to the Board. I must state that I was not aware that the Board did not always take this action (see your discussion of the BARR GROUP case), but I can state the reason we did not file a Request for Reconsideration asking for the amendment to the Supplemental Register in the alternative was because that would have allowed the Examiner another chance to enter more evidence into the record. When the Board remanded the case, I must say that I was concerned that the Examiner would use that opportunity to enter additional evidence anyway. He did not, but the question I have is could he? This was a unique set of facts where use of the ALDECOA mark in the U.S. did not start for Applicant until shortly before the final Official Action was issued. While it now appears the sua sponte suspension and remanding of the case back to the Examiner was a bit of luck, our client's wish to have the mark allowed on the Supplemental in the alternative very early in our appeal brief. Perhaps that is why the remand was made. I do believe the remand was the proper thing for the Board to do in this case.
-Kevin Wilson


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