Wednesday, February 09, 2022

Precedential No. 5: TTABlog Test - Is ATWELL SUITES Primarily Merely a Surname for Hotel Services?

Have you heard of anyone named Atwell? Me neither. The USPTO refused registration of ATWELL SUITES, in standard character and (slightly) stylized form, for various hotel-related services [SUITES disclaimed] on the ground that ATWELL SUITES is primarily merely a surname under Section 2(e)(4). Applicant's survey evidence and its linguistics expert's testimony missed the mark, but what about rareness? What about public exposure to the name? Does "Atwell" look and sound like a surname? How do you think this came out? In re Six Continents Limited, 2022 USPQ2d 135 (TTAB 2022) [precedential] (Opinion by Judge Marc A. Bergsman).

The Board looked to the inquiries set forth in Etablissements Darty et Fils in considering the Section 2(e)(4) issue, noting that these inquiries are not exclusive nor set forth in order of importance:

● Whether Atwell has a non-surname, “ordinary language” meaning;
● The extent to which Atwell is encountered as a surname;
● Whether Atwell is the surname of anyone connected with the applicant;
● Whether the public may perceive Atwell, in the alternative, to be primarily a meaningless, coined term; and
● Whether Atwell has the structure and pronunciation of a surname.

The Board's analysis proceeds "from the perspective of the purchasing public because 'it is that impact or impression which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance.'" In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975) (quoting Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pat. 1955)).

When the mark comprises a surname and another term, the Board must determine whether the added term alters the primary significance of the mark as a whole. See Earnhardt v. Kerry Earnhardt, Inc., 123 USPQ2d at 1415 (citing In re Hutchinson Tech. Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)).

Examining Attorney William H. Dawe III submitted excerpts from the LexisNexis surname database, a Wikipedia page for the Atwell surname listing 18 purportedly "notable" people, and Internet website excerpts referring to people named Atwell, including British actress Hayley Atwell, who has "achieved considerable renown" by appearing in the Marvel Comics Captain America and Avengers movie series. [never heard of her - ed].

As to any non-surname meaning of Atwell, applicant's expert opined, without evidence, that the word has a "metaphorical meaning akin to AT A GOOD PLACE." The Board, however, found that "Atwell" has no non-surname meaning, a factor that supports the refusal to register. There also was no evidence that anyone named Atwell is associated with the applicant, a neutral factor.

The question of whether Atwell has the structure and pronunciation of a surname is a "decidedly subjective" inquiry. Benthin, 37 USPQ2d at 1333. The examining attorney submitted website evidence regarding surname with similar structures to Atwell: for example, Attwell, Caldwell, Adwell, Farwell, Attwood, Atkins. The Board observed that "on its face, 'Atwell' does not look like a coined word or an acronym, nor like anything else but a surname."

Applicant's disclaimer of "suites" is a concession that the word is not inherently distinctive, and also a concession that ATWELL SUITES is not a unitary mark. Furthermore, applicant provided no evidence that adding the descriptive word "suites" to "Atwell" alters the primary meaning of "Atwell" as a surname in the mark ATWELL SUITES. Therefore, the Board found that "the additional, disclaimed term 'suites' does not alter public perception of the mark as a whole as primarily merely a surname."

In support of its contention that consumers will perceive ATWELL SUITES as something other than as a surname, applicant again pointed to the testimony of its linguistics expert, but the Board again pointed out the lack of evidentiary support for his assertion that "Atwell" refers to "a good place to rest."

Applicant also relied on the results of a consumer survey purportedly showing that "consumers do not think that the primary meaning of the applied for mark ATWELL SUITES is a surname." The Board was unimpressed: "This is not surprising because consumers are unlikely to associate a surname combined with a descriptive term as being a surname, let alone primarily merely a surname (e.g., it is unlikely anyone perceives Atwell Suites, Barr Group, or Earnhardt Collection as actual surnames)."

[T]he essence of these appeals is whether the combination of the descriptive word “Suites” with the surname Atwell diminishes the surname significance of “Atwell” such that the primary significance of ATWELL SUITES is other than as a surname. Miller v. Miller, 105 USPQ2d 1615, 1622 (TTAB 2013). In other words, does the mark in its entirety engender a different commercial impression than the component parts of the mark (i.e., a surname and a descriptive term)? See Earnhardt v. Kerry Earnhardt, Inc., 123 USPQ2d at 1415 (citing Hutchinson Tech., 7 USPQ2d at 1492).

The Board observed that applicant's survey asked the wrong questions. Instead of asking "What is the primary meaning of ATWELL SUITES to you?", the survey should have asked "What is the primary meaning of the term ATWELL in the mark ATWELL SUITES to you?" The second question should have been "which of the following, if any, do you associate with the term ATWELL in the mark ATWELL SUITES?", followed by the list of sixteen choices. Moreover, the structure of the survey questions were highly leading toward the response that applicant desired.

Finally, applicant relied on the issuance of its existing registration for ATWELL SUITES AN IHG HOTEL & Design for the same services as identified here, as support for its position, but the Board deemed the prior registration irrelevant since that mark includes the inherently distinctive term IHG.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: In a footnote, the Board stated that even if the survey evidence were accepted at face value, it would not overcome the USPTO's prima facie case.

Text Copyright John L. Welch 2022.


At 11:07 AM, Anonymous Anonymous said...

As a Marvel Cinematic Universe fan, when I saw "ATWELL", I immediately thought of Hayley Atwell, who plays "Agent Carter" in various films and television shows. So, yes, this nerd immediately thought of "ATWELL" as a surname.

At 12:29 PM, Anonymous Anonymous said...

Hayley Atwell - Agent Peggy Carter in the Marvel Cinematic Universe. Had her own show on ABC for two seasons.

At 6:10 PM, Anonymous Paul Reidl said...

Toby Atwell was a journeyman catcher in the 1950's. Spent most of his career with the Pirates and in the minor leagues. You had to be pretty bad to be a minor-league call-up for the 1950's Pirates!

At 7:58 AM, Blogger John L. Welch said...

Paul, you're the only Pirates fan I know. That is, if you haven't switched your allegiance to the Giants.


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