Tuesday, March 16, 2021

Divided TTAB Panel Affirms Surname Refusal of "INGLIS US & Design" for Firearms

Usually when an alleged surname is combined with a design, the Office will approve the mark for publication. Not this time. The Board affirmed a Section 2(e)(4) refusal of the word-and-design mark shown below, for firearms and related goods. The panel majority found that "the additional geographically descriptive term US and the plain diamond background do not remove the primary surname significance." Judge Bergsman dissented, opining that "[t]he Board should restrict the application of what is 'primarily a surname' to trademarks that consist of a mark that is, and only is, a surname." In re John Inglis Company, Limited dba INGLIS, The Inglis Company, Serial No. 88403123 (March 11, 2021) [not precedential] (Majority Opinion by Judge Karen S. Kuhlke). The panel majority stated the current view of Section 2(e)(4), which looks not specifically to the "rareness" of a surname, but to whether the public has been "exposed" to the proposed mark as a surname:

Among the circumstances that may be probative in making this determination are: the extent to which the term is exposed to the public as a surname; whether the term is the surname of anyone connected with the applicant; whether the term has any recognized meaning other than as a surname; whether the term has the structure and pronunciation of a surname; and whether stylization, design or additional wording is distinctive enough to cause the mark not to be perceived as primarily merely a surname.

The Examining Attorney submitted data from LEXIS/NEXIS showing that INGLIS appears 5,439 times as a surname in the United States. The name also is found in several nationwide media articles, identifying, for example, Bob Inglis, a Congressman from South Carolina, Rev. Holly Inglis, a Presbyterian minister in Jacksonville, Florida, and Kipp Inglis, a local artist in Lodi, Wisconsin. The Board found that "the evidence shows the surname INGLIS has enjoyed a measure of exposure to the general public across the country, thereby raising the probability that the public at large would regard INGLIS as a surname, rather than something else."

Although no person associated with applicant has the surname INGLIS, the company was named after John Inglis and the name is used to indicate the quality of the weapons his company produced. This fact supports the surname refusal.

The applicant pointed to several other meanings of INGLIS, including a town in Florida of that name. However there were no dictionary definitions that provided another meaning for INGLIS, other than as a surname. The minor and obscure meanings provided by applicant "do not constitute a readily recognized meaning to strip it of its primary surname significance."

As to structure and pronunciation, the evidence was inconclusive and the Board deemed this factor to be inconsequential.

Finally, the Board pointed out that adding a generic or descriptive term to a surname does not detract from its surname significance. The same is true for a geographically descriptive term like "US" And the background design is "not so unusual or distinctive to convey a separate commercial impression," and likewise do not change the surname significance of INGLIS.

The panel majority concluded that, on balance, the proposed mark is primarily merely a surname within the meaning of Section 2(e)(4).

Judge Bergsman, in dissent, agreed that INGLIS is primarily merely a surname. "However, the mark is not INGLIS. As described by Applicant, "[t]he mark consists of the stylized wording ‘INGLIS US’, ‘INGLIS’ over ‘US,’ inside a diamond outline.'" Judge Bergsman criticized the majority for "characterizing the letters US and the diamond background design as parts of an individual’s surname or pretending they do not form part of the commercial impression engendered by the mark." 

Judge Bergsman harkened back to Judge Seeherman's concurrence in In re Joint-Stock Co. "Baik," in which the former judge discussed the purpose of Section 2(e)(4). In Judge Bergman's words:

The purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames, as though there were something offensive in viewing a surname. Rather, 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.

Nonetheless, Judge Bergsman points out, there has been a general reluctance to protect surnames as registrable trademarks. Yet there is "no absolute rule or public policy suggesting that individuals have an absolute right to use their names."

Therefore, there is no basis for the policy or practice of broadly interpreting the scope of what is “primarily merely a surname.” The Board should restrict the application of what is “primarily merely a surname” to trademarks that consist of a mark that is, and only is, a surname.

Read comments and post your comment

TTABlogger comment: On which side do you come out?

Text Copyright John L. Welch 2021.


At 11:41 AM, Anonymous Anonymous said...

Pretty strongly #TeamBergsman in this one. The surname jurisprudence remains silly but I can be persuaded that INGLIS is a surname. But that's not what they're seeking to register here and it's odd the majority sweeps that away. I don't doubt that in the real world folks would ask for an Inglis gun (or whatever term firearm enthusiasts use) but this is the PTO! The mark as a whole sure doesn't feel primarily merely a surname.

At 12:15 PM, Blogger Matthew I. Berger said...

I’d say: back to the drawing board for the “design” part of the design mark.


Post a Comment

<< Home