Thursday, June 03, 2021

TTABlog Test: Is "SOUND ART CREATION NASH STUDIO" Primarily Merely a Surname?

The USPTO refused to register the proposed mark SOUND ART CREATION NASH STUDIO, in standard character form, for applicant’s music production services, audio or video studio services, non-downloadable music and sound effects, and related goods and services, deeming the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that ‘NASH’ as a surname "represents only 0.0375% of the surnames in this country,” making it a “relatively rare surname in the United States.” It further contended that that the wording “sound art creation” is “a dissonant amalgamation of disparate noun concepts” and is suggestive and not descriptive. How do you think this appeal came out? In re Nash Studio Inc., Serial No. 79284379 (May 27, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Surname?: The examining attorney submitted LEXISNEXIS evidence showing "NASH" appearing 124,244 times as a surname, Wikipedia evidence identifying NASH as a surname of “Irish, English, Welsh or Jewish origin,” and Wikipedia pages providing a list of “notable people” with the surname NASH, including Johnny Nash, an American singer and songwriter, American poet Ogden Nash, Joe Nash, a former NFL professional football player, Steve Nash, a former professional basketball player  (and currently coach of the Brooklyn Nets), and singer-songwriter Graham Nash. So-called "negative dictionary evidence" indicated that NASH that does not identify any ordinary language meaning for the term.

As to applicant's argument regarding rareness, the Board observed that “[t]he issue to be determined under the statute is whether the public would perceive the surname significance as the mark’s primary significance, not whether the surname is rarely encountered.”

It is reasonable to conclude from the nationwide telephone database and Wikipeda evidence of “notable persons,” that NASH has had measurable public exposure as a surname and would be perceived as such.

Applicant maintained that a search of “Nash” in Wikipedia shows many other meanings for “Nash” than a surname, including the nickname of Nashville, Tennessee, which applicant claimed to be the primary significance to the purchasing public. The Board pointed out, however, that applicant failed to make this evidence of record, and it refused to take judicial notice of a Wikipedia entry.

In sum, the Board found that NASH "is an actual, relatively common surname and that no other meaning exists," and it concluded that the primary significance of NASH to the purchasing public is primarily merely that of a surname.

Additional Wording?: The next issue was whether the proposed mark as a whole primarily signifies a surname to relevant consumers. Dictionary definitions and website evidence convinced the Board that "studio" describes applicant's goods and services and that "sound art creation" is a descriptive term of art in the field. 

The next question was "whether the addition of the wording SOUND ART CREATION and STUDIO detracts from or displaces the surname significance of the name NASH in the mark SOUND ART CREATION NASH STUDIO." The Board was unconvinced by applicant's argument that SOUND ART CREATION NASH STUDIO "will be viewed by consumers as suggestive of its music related goods and services and that NASH evokes either a 'coined term' or 'an ambiguous place-name, given the lack of contextual use as a surname.'"

Taken together, the primary significance of the mark SOUND ART CREATION NASH STUDIO is that the goods and services feature sound art creation and are provided by or offered through a studio connected to a person named NASH. Indeed, SOUND ART CREATION happens in the NASH STUDIO. There is nothing in the combination of SOUND ART CREATION NASH STUDIO that diminishes or transforms this immediate connotation.|

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Will applicant seek review in a district court, where it can add evidence? Would you?  

Text Copyright John L. Welch 2021.


At 9:27 AM, Anonymous Anonymous said...

I think a district court judge may well look at this and find the outcome just too bizarre. The outcome was not surprising to TTAB watchers but seems incorrect from a common sense point of view that a court may have sympathy for.

At 2:45 PM, Anonymous Catherine said...

As a TTAB watcher, I think it's a surprising outcome except in the sense that too often the TTAB dissects marks despite saying they are considering them as a whole.

I think this mark is a crazy mish-mosh itself, but I certainly don't see it as primarily merely a surname. It seems they completely ignored "sound art creation" (maybe because they think it's descriptive?) and treated this mark as if it were just "Nash Studio".

All in all, to me this is another crazy TTAB result. The common sense point of view is relevant to the analysis of whether the relevant public would see this mark as primarily merely a surname. I don't believe they would unless there were at least some design element highlighting NASH or NASH STUDIO (such as the spec suggests) -- maybe that's the reason behind the TTAB's ruling.


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