Wednesday, May 20, 2020

TTABlog Test: Is DARBYSHIRE Primarily Merely a Surname Under Section 2(e)(4)?

The USPTO refused registration of the mark DARBYSHIRE for audio books, fictional works, and digital on-demand printing services, deeming the mark to be primarily merely a surname under Section 2(e)(4). The Examining Attorney relied on LexisNexis records showing that 537 persons in the USA have that surname. Applicant contended that the surname is "extremely rare." How do you think this came out? In re Gwabboh LLC, Serial No. 88106129 (May 18, 2020) [not precedential] (Opinion by Judge Mark Lebow).

The Board found that DARBYSHIRE is a rare surname, but it observed once again that even a rare surname is not registrable if "the relevant purchasing public for Applicant's [goods and] services is more likely to perceive Applicant's proposed mark as a surname rather than as anything else." In re Beds & Bars, Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017); see also In re Eximius Coffee, 120 USPQ2d 1276, 1281 (TTAB 2016) (“Section 2(e)(4) makes no distinction between rare and commonplace surnames . . . and even a rare surname is unregistrable if its primary significance to purchasers is a surname.”).

The Examining Attorney also submitted excerpts from several websites referring to various purportedly notable individuals named Darbyshire. When applicant argued that these website were not commonly known, the Examining Attorney contended that applicant had failed to show that these website are uncommon. Not so fast, said the Board. It is the Examining Attorney's burden to make a prime facie case. Nonetheless, the Board decided to consider the websites "for whatever value they may have."

The Board agreed with applicant that this evidence was insufficient to prove that consumers in this country are familiar with DARBYSHIRE as a surname.

To begin with, one would first have to be familiar with DARBYSHIRE as a surname to engage in search for its history and origins, or to search for notable persons having that name. Second, the evidence is inadequate to show that the “notable” persons referred to on those websites, predominantly from the United Kingdom, are notable to the ordinary purchaser in the United States. Third, given the nature and content of the websites, we cannot presume that U.S. purchasers have been exposed to the several personal and business websites listed. On this record, we find that DARBYSHIRE is rarely encountered as a surname and is unlikely to be perceived by the public as having surname significance.

Applicant stated that DARBYSHIRE is not the surname of anyone associated with its business, a neutral factor in the surname analysis. The Examining Attorney provided so-called "negative dictionary" evidence showing that DARBYSHIRE cannot be found in the The Oxford Dictionary or The Columbia Gazetteer of the World, leading the Board to conclud that the term has no other recognized meaning or significance than as a surname.

Finally, there was no evidence as to whether DARBYSHIRE has the structure or pronunciation of a surname, but the Board took judicial notice of the fact that "shire" is "an administrative subdivision especially: a county in England" (e.g., Oxfordshire and Yorkshire). The Board therefore found that DARBYSHIRE "tends to evoke a place name rather than a surname."

The Board concluded that the evidence failed to establish that the primary significance of DARBYSHIRE is merely that of a surname. Resolving any doubt in favor of applicant, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: Isn't Darbyshire a place in a Trollope novel? Or is that Derbyshire?

Text Copyright John L. Welch 2020.


At 10:09 AM, Anonymous Anonymous said...

Exactly my thought. To me, Darbyshire is not primarily a surname, but sounds like a location instead.

At 1:01 PM, Anonymous Anonymous said...

The refusal was certainly a stretch by the examiner!

At 1:36 PM, Blogger Bob Cumbow said...

Rightly decided. Derbyshire is a county in the English midlands and its name is pronounced "Darbyshire". Darbyshire is more commonly found as a surname in Britain ... but "Darbyshire" with the A is the name of a town in Australia.

At 5:08 PM, Anonymous Anonymous said...

yes, the Brits pronounce Derbyshire the way Americans pronounce Darbyshire.

At 10:09 PM, Anonymous Anonymous said...

Definitely a Would You Have Refused?

At 10:14 AM, Anonymous Anonymous said...

This was a failure to provide sufficient evidence to the Board. If the examiner had also supported this refusal with Census evidence, negative dictionary evidence, and evidence that showed that the mark had the look and feel of a surname, the refusal would likely have been affirmed.

At 11:17 AM, Anonymous Anonymous said...

To Anonymous 10:14AM, the examiner provided the number of surnames (537) and the "negative dictionary evidence," the only two factors that would really support a surname refusal. I looked at the 2010 Census, and neither "DARBY" nor "SHIRE" form any part of the "Top 1,000 Surnames", so that would not have helped regarding "look and feel" factor (which is highly subjective anyway, according to the Board at least). I think the examiner did their best by trying to find well-known people with the name, but the evidence of people with DARBYSHIRE as a surname isn't comparable to the evidence of a surname like BELUSHI (found to be a surname with only 5 listings, given the fame of John and Jim Belushi). Everything else was "neutral" (though the Board noted that "SHIRE" has a meaning, which affects the entire meaning of DARBYSHIRE). Looking at the record and evidence the examiner submitted, I'm thinking this was a CYA refusal, since the PTO seems to reject anything that comes up as a surname, regardless of how many people actually use it as a surname, if the term has no meaning in a dictionary. Had the examiner been allowed to exercise their own judgment, this probably would have been allowed to register without having to go through this pointless appeal.


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