Tuesday, February 11, 2020

Precedential No. 3: TTABlog Test: Is "J HUTTON" Primarily Merely a Surname for Eyewear?

The USPTO refused registration of the proposed mark J HUTTON for “Eyewear, eyewear frames and sunglasses," finding the mark to be primarily merely a surname under Section 2(e)(4). Applicant Colors in Optics argued that the mark is not a surname but rather a reference to a specific individual due to the inclusion of the initial “J” in the mark. How do you think this appeal came out? In re Colors in Optics, Ltd., 2020 U.S.P.Q.2d 48321 (T.T.A.B. 2020). [precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Applicant did not challenge the evidence submitted by Examining Attorney Susan Stiglitz that HUTTON is used as a surname in the United States, and it admitted that Hutton is the surname of a person associated with Applicant, Jade Hutton. In fact, Applicant submitted a consent to the use of her name in the mark. However, applicant pointed to third-party registrations for various registered marks consisting of surnames preceded by one or more initials, which registrations issued without a Section 2(f) claim of acquired distinctiveness.

Applicant did not dispute that HUTTON is primarily merely a surname. It contended that the mark as a whole refers to and identifies Jade Hutton, an individual. The Board, however, observed that "[p]erhaps that was Applicant’s intention, but the question is not what J HUTTON means to Applicant. The question is what it means to relevant consumers."

The Board distinguished the J.J. YELEY case [TTABlogged here], in which a well-known NASCAR driver sought to register his name as a trademark for a host of goods. Mr. Yeley submitted a declaration explaining how the mark J. J. YELEY was used, noting that many other NASCAR drivers used their names as trademarks. The evidence established that J. J. YELEY had a recognized meaning as a mark due to his popularity as a race car driver. The Board reversed the surname refusal, concluding that “the primary significance of J. J. YELEY is a personal name and the identity of the race car driver.” The Board also noted it decision in In re P.J. Fitzpatrick, Inc., 95 USPQ2d 1412, 1413 (TTAB 2010) [TTABlogged here], where it found that the mark P.J. FITZPATRICK, INC. was “an entire personal name, not ‘merely’ a surname”).

J.J. Yeley

Here, the evidence showed that Jade Hutton is the name of a person associated with Applicant, but there was no evidence that consumers identify Ms. Hutton as "J Hutton." The Board found this case to be indistinguishable from In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265, 267 (CCPA 1953), in which S. SEIDENBERG & CO'S was found to be primarily merely a surname, the court stating: "It seems to us that 'Seidenberg' is clearly a surname which can have no other meaning or significance than that of a surname. Nor do we believe that the addition of the single initial is sufficient to remove it from that category."

As the Board noted in Fitzpatrick, “if a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily merely a surname.” 95 USPQ2d at 1413. As the Board further explained however, “there is no per se rule” regarding the addition of initials to surnames. Yeley, 85 USPQ2d at 1154; see also Fitzpatrick, 95 USPQ2d at 1413 (noting I. Lewis did not set out a per se rule).

In some cases, adding one initial to a surname may lead consumers to perceive the mark as a personal name, while in others even adding two initials may not create such an impression. "In all cases involving a surname preceded by one or more initials, it is the factual record that matters most, because only from such a record can we make reliable findings about consumer perception."

The Examining Attorney made a prima facie showing that J HUTTON is primarily merely a surname, and applicant provided no evidence of consumer perception of the proposed mark. The third-party registration evidence submitted by applicant showed that "the combination of one or more initials with a surname may be found, depending on the evidence in the case, to indicate that the public would not perceive such a designation as primarily merely a surname, but those registrations are not evidence of how consumers will perceive the mark at issue in this appeal."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: How about "JAY HUTTON?"

I think "J WELCH" would not be perceived as primarily merely a surname. "L WELCH," maybe, but not "J WELCH."

Text Copyright John L. Welch 2020.


At 10:47 AM, Anonymous Anonymous said...

I agree with Mr. Welch's assessment. I had a very similar case of the use of J with a surname and it was approved. I used evidence of baby names where "J" was listed as a first name while other initials were not.

At 4:27 PM, Anonymous Anonymous said...

What do you say when the client asks why the mark EF Hutton for financial services is an active registration?

At 8:47 PM, Anonymous Anonymous said...

What if they added a period after J.?

Seems pretty clear to me that J refers to a first name/initial.

At 11:45 AM, Anonymous Anonymous said...

In reply to the 4:27 anonymous post, you can tell them, “ A mark that consists of two or more initials preceding a surname will typically convey the commercial impression of a personal name and thus generally will not be primarily merely a surname.” TMEP Sect. 1211.1(b)(iii)

At 10:32 AM, Anonymous Leslie P said...

I agree with the Board's decision and its comment that the relevant question is what the name means to relevant consumers. If a mark is not capable of distinguishing a brand, then it is arguably failing to function as a proper trademark and registration should not issue in such cases. An applicant may be more successful in seeking to use some combination of their name when they are more well known or in other words, when their names have acquired distinctiveness. In this case, I would suggest that rather than simply adding one initial letter, the applicant adds their entire first name and also their primary product (e.g. Jade Hutton Sunglasses). This seems to have worked effectively for other companies, such as Kylie Jenner corporation. Consumers are more likely to connect the brand with an individual person when the entire name is used rather than simply adding a letter in front of the surname. Not only does the Act prohibit the use of marks that are primarily surnames, but also surnames are not likely to be capable of brand-signaling right off the bat. The name needs to be significant to the public. 


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