TTAB Affirms Section 2(e)(4) Surname Refusal of VESS for Educational Services
Although the Examining Attorney accepted applicant's claim of acquired distinctiveness under Section 2(f), the applicant maintained its right to contest the Section 2(e)(4) refusal of its mark VESS for various educational services. The Board, however, agreed with Examining Attorney Maureen J. Reed that VESS is primarily merely a surname, and so it affirmed the refusal. In re Education First, Inc., Serial No. 87875275 (May 18, 2022) [not precedential] (Opinion by Judge Christopher Larkin).
The Board spent the first 12 pages of the decision explaining the history of the prosecution of this application. Turning to the substance of the surname, the Board applied the standard Benthin test, focusing first on what has become the most important factor, the "frequency of, and public exposure to" the proposed mark as a surname.
Census bureau data showed that 2300 people have the surname VESS, and online articles, webpages, and pages from Wikipedia and Linkedin referred to persons with the surname VESS. Applicant argued that the online evidence is hearsay, but the Board pointed out that the Federal Rules of Evidence (which define hearsay and govern when it is and is not admissible at a hearing or trial) “do not apply in ex parte appeals." Even if they did, the evidence submitted by the Examining Attorney was not offered for the truth of the matter stated (i.e., so-and-so did such-and-such), but only to show that the public was exposed to use of VESS as a surname.
The Board also rejected the argument that the USPTO must show that persons named VESS are famous or prominent. See In re tapio GmbH [TTABlogged here]. The Board noted that "[i]n the final analysis, however, whether or not 'Vess' is a 'rare' surname is of little importance because ''[e]ven a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname.'"
Applicant claimed that "vess" has other meanings, pointing to the Urban Dictionary. However, because the Urban Dictionary is a collaborative website, the Board requires corroboration of the entries (as it does with Wikipedia). The Board agreed with the Examining Attorney that "vess" does not have an "ordinary language" meaning "of the sort that would be found in a standard dictionary of American English."
Applicant also claimed that "vess" is a fanciful term that it coined as an acronym for the Spanish phrase “Vida Equilibrada Sentido y Sabiduría.” However, there was no evidence that consumers are familiar with the Spanish-language phrase, much less with the claimed abbreviation "V.E.S.S."
Finally, the Examining Attorney furnished evidence that VESS has the structure and pronunciation of a surname, namely, inclusion of the surnames “Hess,” “Ness,” “Bess,” “Gess,” and “Ress” in the LEXISNEXIS Public Records database, all of which surnames have the same four-letter, one-syllable structure as “Vess,” and when pronounced are quite similar in sound to “Vess.”
The Board therefore affirmed the Section 2(e)(4) refusal, but in light of the accepted Section 2(f) claim, the application will now be published for opposition.
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TTABlogger comment: FWIW: I've never met anyone named Vess, Hess, Ness, Bess, Gess, or Ress.
Text Copyright John L. Welch 2022
posted by John L. Welch @ 5/24/2022
7 comments
7 Comments:
Bad decision. BUT, apropos of nothing, Ness WAS a well known surname (irrespective of how many there were). Are readers too young to remember hearing stories about FBI Agent Elliot Ness? What about the later TV show starring Robert Stack as Elliot Ness?
What is considered rare then? 2300 people with the last name Vess according to the article. US census is approximately 332,400,000. That’s 0.00069% of the US population by my calculation. That seems a major stretch.
V for various. E for educational. S for service. Ending "s" to make services plural. VESs.
It's merely descriptive!
HESS is a big oil and gas company in the Northeast, especially around New York, so that one I am familiar with; the others ... not so much.
Of course, I've heard of Elliot Ness, but I never met him. As to Hess, I'm not from New York, so don't know about Hess (or care much about the Jets).
Hello, I want to trademark VESS for educational services. No other marks -> no likelihood of confusion. Examiner - sorry, but VESS is a surname. What?!?! But my client made it up based on Spanish phrase. Sorry, there was no evidence that consumers are familiar with the Spanish-language phrase, much less with the claimed abbreviation "V.E.S.S." And, oh by the way, it looks like HESS so you lose. Huh, I didn't think that fanciful marks needed to be proved by evidence! Lucky for the Applicant, it did not stuck in the cesspool of surname case law but escaped with 2(f) evidence.
I recently received a surname refusal where the only names found (<20 including duplicates) belonged to members of my client's family, all public references to the name referred to my client's business, and the name was very similar to several French words, but no surnames. I argued that it was rare but eventually went with 2(f). In this case, there was not even any person named Hess connected with the business. It looks like the surname test has been reduced to simply whether the name is a surname in the US. That would have been bad news for KODAK if they were trying to register today, since it is also a surname.
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