TTABlog Test: Is "SIMON FAMILY WINES" Primarily Merely a Surname for Wines?

The USPTO refused to register the mark SIMON FAMILY WINES for wines, finding the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that "Simon" may be perceived as a male first name, and pointed out that the Trademark Register lists 29 registrations for marks the include the word SIMON without a claim of acquired distinctiveness under Section 2(f). How do you think this appeal came out? In re Simon Family Wines, LLC, Serial No. 97608809 (August 20, 2024) [not precedential] (Opinion by Judge Robert H. Coggins).

The Board observed that the analysis of the mark in its entirety requires addressing the issue of the surname significance of SIMON, and then determining whether the additional words FAMILY WINES “alter the primary significance of the mark as a whole to the purchasing public.” The following inquiries are pertinent:

• Whether anyone connected with Applicant has the surname SIMON;

• Whether SIMON has a non-surname meaning; and

• The extent to which SIMON is used by others as a surname.

The evidence established that SIMON is the surname of both Sam Simon, the founder of the applicant winery, and Nada Simon, Sam’s wife and business partner. Applicant's website indicates that it is a family-focused business and features images of Sam, Nada, and their sons Michael and Peter in a vineyard. "Promotional materials touting a founder whose surname is in the mark support public perception of the mark primarily as a surname."

Applicant pointed to search results wherein "[a]lmost all the hits relate to Simon as a first name or retail real estate [sic]." The Board observed, however, that most of the entries referred to the musician Paul Simon, including all three of the “Top Stories” and the first video hit. Nonetheless, the search results also included references to Simon Cowell, Simon Sinke, Simon Shopping Malls, and “Simon” as a biblical name and a boy’s name.

The Board pointed out that although “Simon” may also be a male first name, "we keep in mind that '[t]he question is not whether a mark having surname significance might also have a non-surname significance, but whether, in the context of the goods . . . at issue, that non-surname significance is the mark’s primary significance to the purchasing public, thus eclipsing and relegating the mark’s surname significance to secondary rather than primary status.'" Miller, 105 USPQ2d at 1621.

As to the 29 third-party registrations, seven of the marks comprised full names, such as SIMON CARTER. Other marks included a design element. Still others included additional distinctive matter such that the marks as a whole would not be perceived as primarily merely a surname (for example, SIMON SAFETY BEAR for teaching materials, SIMON VERSUS for clothing). None of the registered marks included the term FAMILY WINERY, or even just FAMILY, and none of the registrations  identified wine or wine-related services.

Turning to the use of SIMON by others, the Board noted that SIMON is the 366th most common surname in the USA with some 104,003 incidences. Multiple media sources mentioned people with the surname SIMON, including musicians Carly Simon and Paul Simon, poker player Gilles Simon, Indiana Pacers (basketball team) owner Herb Simon, and politician Steve Simon. The Board found the evidence "sufficiently probative to establish that the purchasing public has been exposed to the surname SIMON."

Next, the Board considered the mark SIMON FAMILY WINES in its entirety, concluding that the additional wording FAMILY WINES "enhances the surname significance of SIMON." "Adding FAMILY immediately after SIMON in the mark creates the overall impression that SIMON is the surname (i.e., family name) of the owner of the winery making Applicant’s goods."

Evidence submitted by Examining Attorney Michael Furda established that "it is common for wineries to be run as family businesses, identifying in a winery name the surname of the family who runs it, and using the term 'family winery' or the like to describe their operations,"

Concluding that the primary significance of SIMON FAMILY WINES to consumers is that of a surname within the meaning of Section 2(e)(4), the Board affirmed the refusal to register. 

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Text Copyright John L. Welch 2024.