Tuesday, January 21, 2020

TTABlog Test: Is MAGNUS Primarily Merely a Surname for Whiskey?

The USPTO refused to register the mark MAGNUS for "whiskey, gin and distilled spirits," finding the mark to be primarily merely a surname under Section 2(e)(4). Examining Attorney Kevin G. Crennan relied on search results showing thousands of individuals with the surname MAGNUS, and on evidence of applicant's promotion of its connection to Joseph Magnus, an historical distiller. Applicant pointed to twelve existing registrations for the word MAGNUS that were not refused registration under Section 2(e)(4). How do you think this came out? In re Jos. A. Magnus & Co., LLC, Serial No. 87618554 (January 15, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington).

Results from three searches turned up several thousand individuals with the surname MAGNUS. The Board found that this evidence "shows that the relevant public has some exposure to MAGNUS as a surname."

Applicant argued that Joseph Magnus is a "past figure" and not a founder of the company, and that no person named MAGNUS is or has been involved in the business. The Board was unmoved:

We find it significant that Applicant has made and continues to prominently make a connection with a person having the surname MAGNUS. Applicant touts this connection directly in its communications with relevant consumers. Applicant’s actions and the actual name of its company clearly reinforce the surname significance of MAGNUS .

The Board found "no meaningful difference between Applicant’s promotion of a connection with a person having the surname MAGNUS and other cases where we held that a party’s promotion of its founder having the surname as establishing public exposure to that surname."

Moreover, there was no evidence that Joseph Magnus had any notoriety with consumers (other than possibly through Applicant’s promotion), let alone the level of fame that has been found to overcome surname refusals in "historical figure" cases (e.g., SOUSA and DAVINCI).

As to non-surname meanings of MAGNUS, the Examining Attorney maintained that "magnus" has no recognized meaning other than as a surname. Applicant pointed to the Latin word "magnus," which means "great" in English. The Board, however, saw no evidence that this meaning "is well-recognized or would pertain to distilled spirits."

Applicant submitted copies of twelve live, third-party registrations for the standard character mark MAGNUS in connection with various goods and services. The Examining Attorney argued the each application must be examined on its own merits, and there was no showing that any of these twelve cases included "a fact pattern that is similar and significant to the instant refusal, namely, the Applicant’s use of MAGNUS as a surname on its website, in its marketing materials, and on its goods."

The Board agreed that each case must be decided on its own merits, and "without knowing more, or in fact anything, about the underlying facts and circumstances in those cases, we cannot say that the registrations demonstrate Office practice with respect to the surname significance of MAGNUS,"

Moreover, in this case, Applicant promotes a connection with an individual with the surname MAGNUS; the same may not have been true with the 12 third-party registrants. Without being privy to the prosecution records of those registration files, it is not possible to ascertain whether the examining attorneys determined that there was no connection between the registrants and individuals having the surname MAGNUS or if there was additional evidence that is not before us in this proceeding. In other words, the examining attorneys may have reached the determination that MAGNUS is not primarily merely a surname based on evidence not of record in this proceeding.

As to the structure and pronunciation of MAGNUS, the Board agreed with applicant that they may suggest a Latin word to some American consumers. However, the Board noted that this is "a fairly subjective matter and is certainly not conclusive that consumers encountering MAGNUS on Applicant’s goods would not perceive the term as a surname." The Board deemed this factor neutral.

Conclusion: The Board found that consumers will perceive MAGNUS as a surname "because Applicant strongly promotes a connection between itself and an individual having the surname MAGNUS." "This, in itself, is highly persuasive that the public would perceive [the mark] as a surname." In re Weiss Watch, 123 USPQ2d at 1202, quoting Darty, 225 USPQ at 653

Read comments and post your comment here.

TTABlog comment: Alternative meanings were the applicant's only hope. Would each of you who recognizes the Latin word "magnus" raise your manus?

Text Copyright John L. Welch 2020.


At 10:04 AM, Blogger Unknown said...

I do remember someone who named his dog "Magnus" because of its large and imposing size, but don't think that would be much help to applicant.


At 10:53 AM, Anonymous Anonymous said...

Applicant should have chosen a cuss word as its mark. Under the law’s value system, cuss words are more appropriate marks than surnames, even relatively rare surnames.


At 12:28 PM, Anonymous Anonymous said...

Magnus as a first name is what immediately came to mind for me, particularly Magnus Carlsen (current chess world champion) and Magnus Nilsson (famed Swedish chef - no, not the Muppets' Swedish chef). There are also some Magnuses that won the World's Strongest Man competition.

At 3:22 PM, Anonymous Anonymous said...

I know a non-US (European) trademark practitioner whose given/first name is Magnus. There are certainly instances readily searchable of "Magnus" as a first name. That should have been an alternate argument.

At 3:46 PM, Anonymous Anonymous said...

Magnus is also a given name. Magnus Ver Magnusson famous for being the World's Strongest Man as well as Magnus Olafsson come to mind.

At 10:28 AM, Anonymous Anonymous said...

It is worth noting that Applicant filed suit against the Highland Park distillery's owner for using MAGNUS on its Highland Park Magnus single malt. Me thinks this is not likely to help their cause.

At 1:21 PM, Blogger Unknown said...

Since a surname is not eligible for trademark registration under 15 U.S. Code § 1052 (e) 4 unless it has acquired secondary meaning, I do not believe that there is any argument here that the surname Magnus has acquired the secondary meaning required for registration. The TTAB got this one right. The surname Magnus had clearly little exposure to consumers in relation to “gin, whiskey, and distilled spirits” prior to the company’s initial promotion of its products.Other cases in which the level of fame was able to overcome surname refusals had broad public exposure and notoriety prior to their applications.


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