Wednesday, October 03, 2018

TTAB Affirms Section 2(e)(4) Surname Refusal of KIPLING for Eyeglasses and Picture Frames

In a 31-page opinion, the Board affirmed a Section 2(e)(4) refusal of KIPLING for, inter alia, eyeglasses and picture frames finding the mark to be primarily merely a surname, and further finding that applicant failed to prove acquired distinctiveness under Section 2(f). Applicant argued that consumers identify the term KIPLING with the famous historical author, Rudyard Kipling, but the evidence failed to show "that Mr. Kipling presently has sufficient notoriety that KIPLING would be understood by the relevant purchasing public as referring solely to Rudyard Kipling, or that Rudyard Kipling is a historical figure." In re Kipling Apparel Corp., Serial No. 86356569 and 86356608 (September 28, 2018) [not precedential] (Opinion by Judge Jyll Taylor).

Section 2(e)(4) Refusal: Applying the Board's Benthin factors, the Board found that KIPLING is a rare surname (around 350 individuals in the United States), but it noted that even a rare surname is unregistrable if its primary significance is a surname. No one connected with applicant has the surname KIPLING. However, KIPLING has no meaning other than as a surname. The Board was unable to determine, due to lack of evidence, whether KIPLING has the structure and pronunciation of a surname.

Applicant contended that its mark is similar to DAVINCI and SOUSA, both names of historical figures and both found registrable in published Board decisions. The Examining Attorney maintained that KIPLING is only "semi-historical" and pointed to the ROTHSCHILD case, where that mark was found to be primarily merely a surname despite being the name of a historical banking family, and also to the MCKINLEY case that had the same result.

The Board, however, noted that in the DAVINCI case there were only two telephone listings for that surname, and therefore the name DAVINCI nearly exclusively connoted the 15th century artist, sculptor, and jack-of-all-trades. As to SOUSA, his renown as a composer of patriotic music and the involved goods and services being pyrotechnical resulted in a finding that the primary significance of "Sousa" was as the name of John Philip Sousa, composer of patriotic marches.

The Board found the MCKINLEY case more on point. There, although the Board noted that McKinley was the historical name of a U.S. President, and although many towns, cities, schools and institutions are named after him, there was insufficient evidence to show that MCKINLEY would be perceived by the public as identifying the historical figure and not as merely a surname.

Similarly, the Board found here that purchasers "would not view Rudyard Kipling as a historical figure such that the primary connotation of the term KIPLING would be to him."

[A]s the Board has previously noted, "[t]here is a difference between being an individual that has made an historically significant contribution ... [and] an individual that has achieved such renown as to become an historical figure." In re Thermo LabSystems Inc., 85 USPQ2d 1285, 1289 (TTAB 2007). Here, while the evidence shows that Mr. Kipling has made a significant literary contribution with his short stories and poems, and that he was a popular writer during the late 19th and 20th centuries, there is insufficient evidence of his current popularity.

The evidence submitted by applicant failed to persuade the Board that Rudyard is a historical figure. Google search results mostly reference Rudyard Kipling or societies featuring his work, but the listings also included two other individuals named Kipling as well as listings for applicant's brand. The fact that applicant states on its website that its brand was named after Rudyard Kipling and explains who he is undercuts its assertion that the primary significance of the term KIPLING is to the British author.

And so the Board concluded that KIPLING is primarily merely a surname.

Acquired Distinctiveness: For these two intent-to-use applications, applicant claimed acquired distinctiveness based on its ownership of prior registrations for the mark KIPLING in standard character and design form (shown below) for luggage, clothing, and retail luggage store services. The Board found that the standard character marks are identical to the applied-for mark, but not the design forms of the mark. Therefore the registrations for the design forms could not be relied upon for acquired distinctiveness.

As to the standard character registrations, the Board found the goods neither intuitively related nor complementary on their fact to the goods of the applications at issue. The Board refused to take judicial notice of third-party registration evidence regarding the relatedness of the goods. [Compare the recent CAFC case involving the Prince of Wales symbol, where the CAFC ordered the Board to take judicial notice of the file history of the Prince of Wales registration - ed..]

The Board concluded that applicant failed to prove that the applied-for marks had acquired distinctiveness, and so it rejected applicant's Section 2(f) claim.

Read comments and post your comment here.

TTABlog comment: If a survey were taken as to the meaning or significance of KIPLING, what level of results would satisfy the Board that KIPLING was perceived as a reference to the British author rather than as a surname? What if applicant were trying to register KIPLING for restaurant services featuring Indian cuisine?

Text Copyright John L. Welch 2018.


At 8:16 AM, Anonymous Doug said...

I don't know if the Kipling double entendre would have worked, but I have never Kippled.

At 8:22 AM, Blogger Frank said...

This decision is just plain wrong and shows the shortcomings of the surname refusal analysis. I hope the applicant appeals.

At 12:15 PM, Blogger Bob Cumbow said...

What Frank said.


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