Monday, January 09, 2017

Judge Seeherman Offers Different Approach to Section 2(e)(4) Surname Refusals

The Board affirmed a Section 2(e)(4) surname refusal of BUTTERFIELDS for auction and appraisal services. Applying the Benthin factors, the Board found that the applied-for mark is not a rare surname, that it has no recognized non-surname significance, and that it has the structure and pronunciation of a surname. Judge Ellen J. Seeherman agreed with the result, but took the opportunity, in a seven-page concurrence, to explain her view of the proper approach to Section 2(e)(4), an approach that focuses on the rareness of the surname. In re Bonhams & Butterfields Auctioneers Corp., Serial Nos. 85443480 and 85443485 (December 29, 2016) [not precedential].

Judge Seeherman set out her view of Section 2(e)(4) in In re "Baik" [TTABlogged here]. On occasion, a Board panel has followed her approach. Here, however, the panel hewed to its recent line of Section 2(e)(4) rulings:

The majority follows the reasoning of several decisions recently handed down by the Board, namely In re Integrated Embedded, In re Eximius Coffee and In re Adlon, cited in the majority opinion. In those decisions, the Board makes it clear that a mark will be found to be primarily merely a surname as long as there is evidence that some people have that surname, no matter how rare the surname is, as long as it is perceived as a surname. The opinions now use the language whether the term is “encountered” as a surname, rather than “the degree of a surname’s rareness,” the language quoted in Benthin.

In Judge Seeherman's evolving view, the degree of rareness of the surname should be the first consideration:

I think the Board must first determine whether there are a sufficient number of people with a particular surname for the mark to even rise to the level of a surname. That is, there must first be a showing that there is some threshold number of people with that surname to make out a prima facie case for refusal under Section 2(e)(4).

The analysis relied upon by the majority, according to Judge Seeherman, ignored the purpose of the Section 2(e)(4) surname prohibition:

"The purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses, in the same manner that merely descriptive terms are prohibited from registration because competitors should be able to use a descriptive term to describe their own goods or services." Binion, 93 USPQ2d at 1540.

If the surname is rare, there is no need to keep it available for anyone with that surname just because there is a theoretical possibility that another might wish to use the surname for goods or services related to those of the applicant.

The Lanham Act has never been as rigidly interpreted with respect to other grounds of refusal as Section 2(e)(4) is now interpreted under the Board's current approach. Now, a mark that is a rare surname may be refused registration even if the surname has little exposure to the public, as long as it has no other meaning, or looks and sounds like a surname, or articles can be found referring to a few people having the surname.

Accordingly, in my view, the rareness of a surname must be part of the threshold question of whether there is sufficient evidence of surname use for the mark to qualify as being a surname, and only if the answer to that question is “yes” should the analysis reach a consideration of whether the mark will be recognized as a surname.

Read comments and post your comment here.

TTABlog comment: Postscript: Judge Seeherman retired from government service at the end of December 2016.

Text Copyright John L. Welch 2017.


At 8:41 AM, Anonymous Joe dreitler said...

I think she is 100% correct. What possible purpose is there to refuse a term that is a surname for less than a 100 people and is not being used as a trademark for similar goods or services by any of them? That is protecting the public? The 93 people who don't run a business in that field?

At 10:36 AM, Blogger Dave Oppenhuizen said...

I absolutely agree with Judge Seeherman. There has been a disconnect between the recent decisions and the public policy behind Section 2(e)(4) surname refusals.

At 10:39 AM, Blogger Frank said...

Judge Seeherman is certainly correct in my opinion. I have been quoting her in my responses to surname refusals for many years. However, I wish that the CAFC would back her correct reading of the Lanham Act.

At 1:30 PM, Anonymous Paul reidl said...

I agree with Judge Seeherman, too. I suspect that the Federal Circuit might as well. Recall their language in In re Coors about how taking a broad approach to relatedness in that case would unnecessarily restrict the ability of folks to register marks for different goods/services. It seems that the Board's current policy of refusing registration of rare surnames could be criticized in the same manner.

At 4:23 PM, Anonymous Anonymous said...

My take is that the Board's analysis is that if the mark originated as the surname of someone associated with the applicant, then it's primarily merely a surname, period.

The mindset now seems to be more "Stop from being able to seize exclusive rights in the name because he's the first one to use it commercially" rather than "Evaluate what the likelihood of some other actually wanting to be the second+ one to use it commercially".

... except that we have cases like Okamoto, from as recent as 2015, which go exactly the other way and give a pretty high bar for refusal. Maybe the answer is just the more traditionally English the feel of a surname is, the worse your odds are.

At 5:23 PM, Anonymous Anne Gilson LaLonde said...

Also, when did the Board move from "look and feel of a surname" to "structure and pronunciation of a surname"? Trying to make it sound more scientific?

At 6:23 PM, Anonymous Anonymous said...

What if the issue had been 'Butterfield" in referance to a dairy product or butter. Would the board still have viewed it as primarly a surname? I doubt it would have. It might view it as not trademarkable under some other issue, but it wouldn't pull out the surname question as the reason to deny it a trademark? If you could show that under some condition the word would not be viewed as a surname what would happen then?

At 3:28 PM, Anonymous Zick Rubin said...

Why is it the judge with the rare surname (Seeherman) who is so anxious to protect the exclusive rights of first-comers with rare surnames, while the judges with more common surnames (Greenbaum and Hightower) are not so concerned?

But I'm not so sure about Judge Seeherman's position. Let's say that Sam Chevapravatdumrong (a surname shared in the U.S. with only two distant cousins) applies to register his surname for a Thai restaurant. His cousins want to start their own Thai restaurant. It's a family tradition. Should they be deprived of the use of their own surname just because Sam got there first?



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