______________________________________________

SURNAME REFUSAL:
CONCEPTS AND DEFENSES
______________________________________________

Compiled by:
Carmelito D. Clabisellas Jr.

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 CONTENTS

I. INTRODUCTORY CONCEPTS---------------------------------------------------------3
Primarily Merely Surname. ---------------------------------------------------------------4
Burden of Proof----------------------------------------------------------------------------5

II. BENTHIN FACTORS----------------------------------------------------------------------7

Rareness--------------------------------------------------------------------------------------7
Applicant's Surname Use----------------------------------------------------------------12
Other Recognized Meaning-------------------------------------------------------------13
Look and Feel of Surname--------------------------------------------------------------17
Stylization----------------------------------------------------------------------------------18

III. SURNAME COMBINED WITH ADDITIONAL MATTER----------------19

Double Surnames-------------------------------------------------------------------------19
Surname Combined with Initials-------------------------------------------------------20
Surname Combined with Title----------------------------------------------------------21
Surname in Plural or Possessive Form------------------------------------------------22
Surname Combined with Wording-----------------------------------------------------23
Surname Combined with Domain Name---------------------------------------------24
Surname Combined with Legal or Familiar Entity Designation------------------24

IV. EVIDENCE THAT MAY BE RELEVANT RELEVANT TO A

SURNAME REFUSAL------------------------------------------------------------------------25
Telephone Directory Listings-----------------------------------------------------------25
Lexisnexis Research Database Evidence.-------------------------------------------25
U.S. Census Database Evidence--------------------------------------------------------26
Specimens Confirming Surname Significance of Term----------------------------27
Negative Dictionary Evidence----------------------------------------------------------27
Evidence Of Fame Of A Mark.--------------------------------------------------------27
Internet Evidence-------------------------------------------------------------------------28

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 I. INTRODUCTORY CONCEPTS

1. Section 2(e) (4) of the Trademark Act (or Lanham Act) precludes registration
of a mark which is primarily merely a surname. Said provision states in
particular:

No trademark by which the goods of the applicant may be

distinguished from the goods of others shall be refused
registration on the principal register on account of its
nature unless it

xxx

(e) Consists of a mark which (1) when used on or in

connection with the goods of the applicant is merely
descriptive or deceptively misdescriptive of them, (2) when
used on or in connection with the goods of the applicant is
primarily geographically descriptive of them, except as
indications of regional origin may be registrable under
section 1054 of this title, (3) when used on or in connection
with the goods of the applicant is primarily geographically
deceptively misdescriptive of them, (4) is primarily
merely a surname, or (5) comprises any matter that, as a
whole, is functional. (Emphasis supplied).

2. Such refusal is commonly known as the Surname Refusal. Under Section

2(e)(4) of the Trademark Act, a mark that is primarily merely a surname is not
registrable on the Principal Register absent a showing of acquired
distinctiveness under Section 2(f). A mark that is primarily merely a surname
may be registrable on the Supplemental Register in an application under 1 or
44 of the Trademark Act.

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 3. This refusal reflects a common law practice that exclusive rights in a surname
per se cannot be established without evidence of long and exclusive use which
changes its significance to the public from a surname of an individual to a mark
for particular goods or services. See In re Etablissements Darty et Fils, 759 F.2d 15,
225 USPQ 652, 653 (Fed. Cir. 1985).

4. It also recognizes that surnames are shared by more than one individual, each
of whom may have an interest in using his surname in business, and by the
requirement for evidence of distinctiveness, in effect, delays appropriation of
exclusive rights. See 1 J. Gilson, Trademark Protection and Practice 2.08 (1982).
Note that not all marks which consist of a surname are refused registration. It
is required that such surname is primarily merely a surname.

PRIMARILY MERELY A SURNAME

5. The question of whether a word sought to be registered is primarily merely a

surname within the meaning of the statute can be resolved only on a case by
case basis. Even though a mark may have been adopted because it is the
surname of one connected with the business, it may not be primarily merely a
surname under the statute because it is also a word having ordinary language
meaning. The language meaning is likely to be the primary meaning to the
public. See Fisher Radio Corp. v. Bird Electronic Corp., 162 USPQ 265, 266-
67 (TTAB 1969) (BIRD not primarily merely a surname). On the other hand,
where no common word meaning can be shown, a more difficult question
must be answered concerning whether the mark presented for registration
would be perceived as a surname or as an arbitrary term.

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 6. For example, in the Darty1case, the service mark DARTY was refused
registration on the ground that DARTY is primarily merely a surname. The
mark was not only the surname of a principal of a business, but is also used in
the company name in a manner which reveals its surname significance to the
consuming public which has familiarity to the French language. In French,
Darty et Fils translates as Darty and Son. In such a case, the mark has a
surname significance which makes it primarily merely a surname.

7. In surname cases, we must determine the impact the term has or would have
on the purchasing public because it is the impact or impression which should
be evaluated in determining whether or not the primary significance of a word
when applied to a product has a surname significance. If it is, and it is only that,
then it is primarily merely a surname. See In re HarrisIntertype Corp., 518 F.2d
629, 186 USPQ 238, 239 (CCPA 1975), quoting, Ex parte Rivera Watch Corp., 106
USPQ 145 (Commr 1955).

BURDEN OF PROOF

8. The burden of proof is initially on the Examining Attorney to establish a prima

facie case that a mark is primarily merely a surname. See In re Etablissements Darty
et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985).

9. The burden then shifts to the Applicant to rebut this showing. In re Petrin Corp.,
231 USPQ 902 (TTAB 1986).

1
In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985)
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10. There is no rule as to the kind or amount of evidence necessary to make out a
prima facie showing that a term is primarily merely a surname. The question
must be resolved on a case-by-case basis. See, e.g., In re Monotype Corp. PLC, 14
USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., Ltd., 230 USPQ 79
(TTAB 1986).

11. If the examining attorney makes that showing, then we must weigh all of the
evidences from the examining attorney and the applicant. If there is any doubt,
we must resolve the doubt in favor of applicant. See In re Benthin Management
GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995).

12. It is very important to note that the Patent Office has the burden to show that
the mark is primarily merely a surname. If the Office does not meet this
burden, the applicant need not demonstrate non-surname significance of its
mark. In re Kahan Weisz, 508 F.2d at 832-33, 184 USPQ at 421-22. Unless the
Patent Office meets this burden, there is no cogent reason why the mark be
refused registration under Section 2(e)(4). This burden is heavily lodged against
the Patent Office. In the Kahan case, the mark DUCHARME for watches
was held not primarily merely a surname apparently because the PTO initially
refused registration without any evidence that the mark DUCHARME was a
surname. The PTO sought to reinforce its position by resorting to the
applicants submissions. Here, even if the applicants submissions were
sufficient, the refusal to register without the examiner having produced prima
facie evidence is improper. Remember, the burden only shifts to applicant only
after the examining attorney has produced the prima facie evidence.

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 II.THE BENTHIN FACTORS

13. The Trademark Trial and Appeal Board (TTAB) identified five (5) factors in
determining whether a mark is primarily merely a surname, called as the
Benthin factors. See In re Benthin Management GmbH, 37 USPQ2d 1332, 1334
(TTAB 1995). The five factors are:

(1) whether the surname is rare;

(2) whether the term is the surname of anyone connected with the applicant;
(3) whether the term has any recognized meaning other than as a surname;
(4) whether it has the look and feel of a surname; and
(5) whether the stylization of lettering is distinctive enough to create a separate
commercial impression.

FIRST FACTOR: RARENESS

A. Numbers Game

14. The rarity of a surname is an important factor to be considered in determining

whether a term is primarily merely a surname. In re Joint-Stock Co. Baik, 84
USPQ2d 1921, 1924 (TTAB 2007). The test is whether the primary (not
secondary) significance of the term to the purchasing public is that of a
surname.

15. In most cases, the Examining Attorney (EA) would insist that the mark is not
extremely rare but only RELATIVELY rare or common. In cases of relative

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 rareness, the EA will provide a summary and partial listing of individuals
having a surname the same that of the mark. In addition, reports, notices,
articles, and etc. may be submitted for evidence.

16. Remember, however, there is no minimum number of listings required in order

to establish a prima facie showing that the mark is primarily merely a surname
(See, e.g., In re Petrin Corp., 231 USPQ 902 (TTAB 1986); In re Wickuler-Kupper-
Brauerei KGaA, 221 USPQ 469 (TTAB 1983). Often, the number is assessed
according to its proportion with the total number of population. The bigger the
proportion, the bigger the likelihood that the mark would be considered as
relatively rare only and not extremely rare.

17. In the Baik case2, the PTO submitted evidence essentially comprising of 456
telephone listings of the BAIK surname from a comprehensive directory of
the entire United States. The TTAB concluded that given the number of hits,
BAIK is an extremely rare surname and not relatively rare.

Below is a RECOMMENDED DEFENSE when confronted with this issue:

18. Attack the number. Since there is no minimum number required to establish a
prima facie evidence, it is a matter of convincing that the number presented by
the EA is undeniably a small percentage of the number of people living in the
United States. In the Baik case, the Applicant argued that there are over 100
million residential telephone listings in the United States. Below is a portion of
the reply brief of the Applicant in the said case arguing against the number of
listings:

2
In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007)
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 There are over 100 million residential telephone
listings in the United States. The Examining
Attorneys evidence thus suggests that less than
0.000456% of all people in the United States have
the surname Baik. This is a small percentage. The
chance that a given person you meet will not have
this surname is greater than 99.999544%. If the
average person meets 10,000 other people in their
lifetime (an extremely generous estimate), the
chances of never meeting a person named Baik are
greater than 0.99999544^10,000, or 95.5%. In reality,
the percentage of people who have not met a person
with the Baik surname is likely much greater than
95.5% because people with the Baik surname are
likely to be clustered in a given ethnic group
(Malaysians and Koreans) and there is less
socialization between ethnic groups than within
them.

When the EA presents a number of listings, they attempt to extract them from
directories with huge number of listings since they give higher chances of
revealing individuals with a surname the same that of the mark. It is strategic
for the Applicant to reveal the total number of listings registered in the
database where the EA extracted the listings (e.g. Verizon, USFind , and
NEXIS) or the entire number of listings registered in the country in order to
provide a more convincing proportion. In the above example, it is the latter
that was used.

B. Extremely Rare Surnames but Unregistrable

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19. In some instances, EAs would not resort to providing a number of listings to
show that the mark is a common or a relatively rare surname. They would
instead argue that rare surnames may be unregistrable under Section 2(e)(4) if
their primary significance to purchasers is that of a surname. See In re
Establissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985).

20. The issue of determining whether a surname is common or rare is not

determined solely by comparing the number of listings of the surname in a
computerized database with the total number of listings in that database
because even the most common surname would represent only a small fraction
of such a database. Rather, if a surname appears routinely in news reports,
articles and other media as to be broadly exposed to the general public, then
such surname is not rare and would be perceived by the public as primarily
merely a surname. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).

21. In the Gregory case, the Board determined that although the surname ROGAN,
which appeared in 1,087 listings in phone directories (which can be considered
rare when viewed in terms of frequency of use as a surname in the general
population), was not a rare surname when viewed as a name repeated in the
media and in terms of public perception. Accordingly, the Board concluded
that ROGAN was not a rare surname.

In sum, using the Gregory doctrine, there are two ways to view the rareness of
the name:

(i) Rareness in terms of frequency of use as a surname in the general

population; and

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 (ii) Rareness in terms of public perception

22. Widespread use of the word as a surname in the media or publicity accorded
to famous individuals bearing the word as their surname could potentially
diminish the extreme character of the rareness of the mark by broadly
exposing it to the general public.

23. In the Baik case, the EA presented news reports, articles and other media. The
EA argued that even if the number of listing, i.e. 456 that was previously
submitted, the rarity of the appearance of BAIK in online directories is
mitigated by the manner in which BAIK routinely appears in news reports. In
other words, when the name has become famous or known to the public, it
is immaterial whether there is only a few number of listings.

Below are RECOMMENDED DEFENSES to overcome this argument:

24. Attack how routinely the name appears in the media. The EA will
present articles or news reports in which the surname appears to prove that the
name is routinely or regularly published. However, to say that it appears
routinely is highly speculative. It is strategic to cite how often the name was
cited in the articles or news i.e. the number of times it is cited and whether or
not it is the main topic of the articles. In the Baik case, it was observed that the
name BAIK was cited only once and that it was buried within the main story
of the news or articles presented by the EA.

25. Attack the readership or viewership of the cited media. In an attempt to

prove that the surname has attained primary significance to the consuming
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 public, the EA will present whatever articles that cite the name. However, this
is not necessarily meritorious. How accessible the cited media are to the public?
In the Baik case the EA submitted two trade papers (New Jersey Law Journal
and Pennsylvania Law Weekly) which the Board finds to have limited
readership. If such is the case, it will destroy the presumption that the surname
has attained primary significance since it is not regularly exposed to the
consuming public.

Even assuming, for the sake of argument that the cited media have wide
readership or viewership, we can point out whether or not the surname is the
main topic of the article. If it is not, we can use the previous argument that the
name is buried within the main story. If it is, we need to consider whether
such usage of the term refers to it as a surname or as any other word with
different meaning/s. In the latter, it becomes obvious that the name is not
primarily merely a surname since it has a non-surname significance, which is
another alternative defense.

SECOND FACTOR: APPLICANTS SURNAME USE

26. Whether the term is the surname of anyone connected with the applicant, the
record does not reveal any connection. However, the fact that a proposed mark
is not the surname of an officer or employee, does not tend to establish one
way or the other whether the proposed mark would be perceived as a surname.
See In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).

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 27. The fact that a term is the surname of an individual associated with the
applicant (e.g., an officer or founder) is evidence of the surname significance of
the term. See In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652,
653 (Fed. Cir. 1985); Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615, 1620-21
(TTAB 2013); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314, 1315
(TTAB 1990); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566
(TTAB 1988); In re Taverniti, SARL, 225 USPQ 1263, 1264 (TTAB 1985), recon.
denied, 228 USPQ 975 (TTAB 1985).

28. The controlling rule is that the mark must not be the surname of anyone
connected with the applicant, in order for registration to prosper. In the event
that the evidences presented by the EA or the applicant are silent about this,
this argument becomes neutral and cannot be used by both the EA or the
applicant. This is consistent with the Baik case.

THIRD FACTOR: OTHER RECOGNIZED MEANING

A. Ordinary Language Meaning

29. If there is a readily recognized meaning of a term, apart from its surname
significance, such that the primary significance of the term is not that of a
surname, registration should be granted on the Principal Register without
evidence of acquired distinctiveness. See In re Isabella Fiore LLC, 75 USPQ2d
1564 (TTAB 2005). In the Isabella case, the Board held that the term FIORE is
not primarily merely a surname where it is also the Italian translation of the
English word flower.

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 30. In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000), the Board held that the
relatively rare surname HACKLER is not primarily merely a surname because it
has a dictionary equivalent.

31. However, this does not mean that an applicant only has to uncover a non-
surname meaning of a term to obviate a refusal under Section 2(e)(4). See In re
Nelson Souto Major Piquet, 5 USPQ2d 1367 (TTAB 1987).

32. The mere existence of other non-surname meanings of a term does not
preclude a finding that the term is primarily merely a surname. In Mitchell Miller,
P.C. v. Miller, 105 USPQ2d 1615, 1621 (TTAB 2013), it was held that MILLER
LAW GROUP is primarily merely a surname for legal services despite other
meanings of the term miller.

33. The question is not whether a mark having surname significance might also
have a non-surname significance, but whether, in the context of the goods or
services at issue, that non-surname significance is the mark's primary
significance to the purchasing public. See In re Harris-Intertype Corp., 518 F.2d
629, 631, 186 USPQ 238, 239 (C.C.P.A. 1975).

B. Phonetic Equivalent of Term with Ordinary Language Meaning

34. A term may be primarily merely a surname even if it is the phonetic equivalent
of a word that has an ordinary meaning (e.g., Byrne/burn; Knott/not or knot;
Chappell/chapel). See In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986). In the
Picket case, it was held that PICKETT SUITE HOTEL is primarily merely a

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 surname despite applicants argument that PICKETT is the phonetic
equivalent of the word picket.

35. However, in another case (See In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071
(TTAB 1989), it was held that CALISTO is not primarily merely a surname.
The Board characterizing the telephone directory evidence of surname
significance as minimal and in noting the mythological significance of the
name Callisto, stating that it is common knowledge that there are variations
in the rendering of mythological names transliterated from the Greek alphabet.

36. Accordingly, the fact that a word that has surname significance is also a hybrid
or derivative of another word having ordinary language meaning is insufficient
to overcome the surname significance, unless the perception of non-surname
significance would displace the primary surname impact of the word. See In re
Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985). For
example, in one case (See In re Petrin Corp., 231 USPQ 902 (TTAB 1986) it was
held that the mark PETRIN is primarily merely a surname despite applicants
argument that the mark represents an abbreviation of petroleum and
insulation.

C. Geographical Significance

37. A term with surname significance may not be primarily merely a surname if that
term also has a well-known geographical meaning. In re Colt Indus. Operating
Corp., 195 USPQ 75 (TTAB 1977). Here, it was held that FAIRBANKS is not
primarily merely a surname because the geographical significance of the mark
was determined to be just as dominant as its surname significance.

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 38. However, the fact that a term is shown to have some minor significance as a
geographical term will not dissipate its primary significance as a surname. In re
Hamilton Pharm. Ltd., 27 USPQ2d 1939 (TTAB 1993). In the Hamilton case, it
was held that HAMILTON is primarily merely a surname.

D. Historical Place or Person

39. A term with surname significance may not be primarily merely a surname if that
term also identifies a historical place or person. See Lucien Piccard Watch Corp. v.
Since 1868 Crescent Corp., 314 F. Supp. 329, 331, 165 USPQ 459, 461 (S.D.N.Y.
1970). In the cited case herein, it was held that the mark DA VINCI is not
primarily merely a surname because it primarily connotes Leonardo Da Vinci).

40. In another case (See In re Pyro-Spectaculars, Inc., 63 USPQ2d 2022, 2024 (TTAB
2002), it was held that the mark SOUSA for fireworks and production of
events and shows featuring pyrotechnics is not primarily merely a surname,
where the evidence showed present-day recognition and continuing fame of
John Philip Sousa as a composer of patriotic music, and the applicants goods
and services were of a nature that would be associated by potential purchasers
with patriotic events such as the Fourth of July, patriotic figures, and patriotic
music).

41. Likewise, in the case of Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d
1132, 1136 (TTAB 2000) it was concluded that the primary significance of the
mark M. C. ESCHER to be that of a famous deceased Dutch artist);

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 42. However, in one case (See In re Pickett Hotel Co., 229 USPQ 760, 762 (TTAB
1986), it was held that the mark PICKETT SUITE HOTEL is primarily merely
a surname despite applicants evidence that PICKETT was the name of a
famous Civil War general. This case is the same with In re Champion Intl Corp.,
229 USPQ 550, 551 (TTAB 1985), in which it was held that the mark
McKINLEY is primarily merely a surname despite being the name of a
deceased president).

43. It is important to take note that the evidence that an individual is famous in a
particular field does not necessarily establish that he or she is a historical figure.
In re Binion, 93 USPQ2d 1531 (TTAB 2009). It was held in the Binion case that
the marks BINION and BINIONS are primarily merely surnames; although
there was evidence that applicant had played a significant role in the gaming
industry in Las Vegas, his notoriety was not deemed so remarkable or so
significant that he is a historical figure.

44. Furthermore, the Board has held that a surname that would be evocative of
numerous individuals, rather than one particular historical individual, does not
qualify as a historical name and is merely a surname of numerous individuals
with varying degree of historical significance. See In re Thermo LabSystems Inc., 85
USPQ2d 1285 (TTAB 2007).

FOURTH FACTOR: LOOK AND FEEL OF SURNAME

45. Some names, by their very nature, have only surname significance even though
they are rare surnames. See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d
1564, 1566 (TTAB 1988). In the cited case herein, the mark PIRELLI was

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 considered primarily merely a surname. The Board stated that certain rare
surnames look like surnames and certain rare surnames do not and... PIRELLI
falls into the former category....).

46. Conversely, certain surnames are so rare that they do not even have the
appearance of surnames. In such cases, even in the absence of non-surname
significance, a reasonable application of the primary significance to the
purchasing public test could result in a finding that the surname, when used as
a mark, would be perceived as arbitrary or fanciful. In re United Distillers plc, 56
USPQ2d 1220, 1222 (TTAB 2000). In this, it was held that the mark
HACKLER does not have the look and feel of a surname.

47. The look and feel of a surname is its structure and pronunciation or look
and sound.

48. It must be noted, however, in the Baik case, finding lack of other recognized
meaning does not in itself imbue a mark with the look and feel of a surname.

FIFTH FACTOR:ELEMENT OF STYLIZATION

49. A mark comprised of a word that, standing by itself, would be considered

primarily merely a surname, but which is coupled with a distinctive stylization
or design element, is not considered primarily merely a surname. In re Benthin
Mgmt. GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995). In the case cited
hereunder, it was concluded that the stylized display of term BENTHIN is to
be considered a factor weighing against a finding that the term would be

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 perceived as primarily merely a surname. If it is distinctive enough, this would
cause the mark not to be perceived as primarily merely a surname.

50. However, the addition of a nondistinctive design element or stylization to a

term that, standing by itself, is primarily merely a surname does not remove the
term from that category. The primary significance of the mark, in its entirety,
would be merely that of a surname. See In re Pickett Hotel Co., 229 USPQ 760,
763 (TTAB 1986). In the Picket case, it was held that PICKETT SUITE
HOTEL is primarily merely a surname despite the stylization of the lettering,
which was considered insignificant, in that it is clearly not so distinctive as to
create any separate commercial impression in the minds of purchasers of
appellants services.

51. The display of a term in lower-case lettering does not detract from its surname
significance. In re Directional Mktg. Corp., 204 USPQ 675, 677 (TTAB 1979).

III.SURNAME COMBINED WITH ADDITIONAL MATTER

A. DOUBLE SURNAMES

52. A combination of two surnames is not primarily merely a surname, within the
meaning of Section 2(e)(4), unless there is evidence of record showing that the
combination would be perceived by the public primarily merely as a surname.
See In re Standard Elektrik Lorenz A.G., 371 F.2d 870, 873, 152 USPQ 563, 566
(C.C.P.A. 1967). In the herein cited case, it was held that the mark SCHAUB-
LORENZ is not primarily merely a surname. The Court noting that there was
no evidence submitted that the mark sought to be registered was primarily

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 merely a surname; that the only evidence of surname significance related to the
individual SCHAUB and LORENZ portions of the mark; and that the
mark must be considered in its entirety rather than dissected.

B. SURNAME COMBINED WITH INITIALS

53. A mark that consists of two or more initials preceding a surname will typically
convey the commercial impression of a personal name and thus generally will
not be primarily merely a surname. In re P.J. Fitzpatrick, 95 USPQ2d 1412, 1414
(TTAB 2010). It was held that the initials P.J. coupled with surname
Fitzpatrick would be perceived as a given name and thus comprises an entire
personal name, not merely a surname;

54. In one case (see In re Yeley, 85 USPQ2d 1150, 1153 (TTAB 2007) it was held
that the proposed mark J.J. YELEY was recognized as the full name of the
well-known NASCAR race driver and as such was perceived as a reference to a
particular person and not primarily merely a surname.

55. Likewise, in the case of Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d
1132, 1136 (TTAB 2000) it was held that the primary significance of M.C.
ESCHER was that of a famous deceased Dutch artist, commenting that [t]he
mark M.C. ESCHER would no more be perceived as primarily merely a
surname than the personal names P.T. Barnum, T.S. Eliot, O.J. Simpson, I.M.
Pei and Y.A. Tittle..

56. Although marks consisting of a single initial preceding a surname have been
held to be primarily merely a surname, In re I. Lewis Cigar Mfg. Co., 205 F.2d 204,
98 USPQ 265 (C.C.P.A. 1953), the Board has noted that no per se rule exists

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 that a single initial preceding a surname must be deemed primarily merely a
surname. The Board furthered that such a mark would not be perceived as
primarily merely a surname where the record shows that the addition of a single
initial to a surname creates the commercial impression of a personal name. Id.

57. Therefore, applicants may attempt to overcome a surname refusal as to a mark

consisting of a single initial preceding a surname by submitting evidence that
the mark would likely be perceived as a personal name. For example, an
applicant may provide evidence that consumers in general perceive a single
initial preceding a surname as a personal name. Or, an applicant may show that
such a mark is the name of an individual, such as the applicant or a signatory of
the applicant, and evidence shows it would be recognized as such by the
consuming public. In addition, if the applicant indicates that the name in the
mark is that of a particular living individual, the applicant must provide written
consent to register the mark from this individual. See TMEP Sections
813, 813.01(a), 1206.04(a).

58. However, when the name in the mark is identical to the name of the applicant
or of a signer of the application (e.g., the mark is A. JONES and the applicants
name or signatory is A. Jones), consent is not necessary. In such cases, consent
is presumed, but the examining attorney must ensure that a consent statement
is entered into the Trademark database. See TMEP Sections 813, 813.01(a),
and 1206.04(b).

C. SURNAME COMBINED WITH TITLE

59. A title, such as Mr., Mrs., Mlle., Dr., or MD, does not diminish the
surname significance of a term; rather, it may enhance the surname significance

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 of a term. In re Rath, 402 F.3d 1207, 74 USPQ2d 1174 (Fed. Cir. 2005). In the
Rath case, the decision of the Board was affirmed holding that DR. RATH is
primarily merely a surname.

60. In In re Giger, 78 USPQ2d 1405 (TTAB 2006), it was held that GIGER MD is
primarily merely a surname).

61. Likewise, in In re Revillon, 154 USPQ 494 (TTAB 1967), it was held that MLLE.
REVILLON is primarily merely a surname);

62. However, in In re Hilton Hotels Corp., 166 USPQ 216, 217 (TTAB 1970), it was
held that LADY HILTON not primarily merely a surname because it suggests
a person or lady of nobility).

D. SURNAME IN PLURAL OR POSSESSIVE FORM

63. The surname significance of a term is not diminished by the fact that the term
is presented in its plural or possessive form. See In re Binion, 93 USPQ2d 1531
(TTAB 2009).

64. In In re McDonalds Corp., 230 USPQ 304, 306 (TTAB 1986), it was held that the
mark MCDONALDS is primarily merely a surname based on a showing of
surname significance of McDonald, the Board noting that it is clear that
people use their surnames in possessive and plural forms to identify their
businesses or trades.

65. Likewise, in In re Luis Caballero, S.A., 223 USPQ 355 (TTAB 1984) it was held
that BURDONS is primarily merely a surname based in part on telephone
listings showing surname significance of Burdon)

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E. SURNAME COMBINED WITH WORDING

66. The treatment of marks that include wording in addition to a term that,
standing by itself, is primarily merely a surname, depends on the significance of
the non-surname wording. If the wording combined with the surname is
incapable of functioning as a mark (i.e., a generic name for the goods or
services), the examining attorney must refuse registration on the ground that
the entire mark is primarily merely a surname under Section 2(e)(4). If the
policy were otherwise, one could evade Section 2(e)(4) by the easy expedient of
adding the generic name of the goods or services to a word that is primarily
merely a surname. See Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615 (TTAB
2013). In the case cited hereunder, it was held that MILLER LAW GROUP for
legal services is primarily merely a surname.

67. In In re Hamilton Pharm. Ltd., 27 USPQ2d 1939 (TTAB 1993) it was held that
HAMILTON PHARMACEUTICALS for pharmaceutical products is primarily
merely a surname).

68. In In re Possis Med., Inc., 230 USPQ 72, 73 (TTAB 1986), it was held that
POSSIS PERFUSION CUP is primarily merely a surname, the Board finding
that [a]pplicants argument that PERFUSION CUP is not a generic name for
its goods... is contradicted by the evidence the Examining Attorney has pointed
to).

69. If the wording combined with the surname is capable of functioning as a mark
(i.e., matter that is arbitrary, suggestive, or merely descriptive of the goods or
services), the mark is not considered to be primarily merely a surname under
Section 2(e)(4). However, if the additional wording is merely descriptive or the
equivalent, and a disclaimer is otherwise proper, the examining attorney must

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 require a disclaimer of the additional wording. See In re Hutchinson Tech. Inc., 852
F.2d 552, 555, 7 USPQ2d 1490, 1493 (Fed. Cir. 1988). In the Hutchinson case, the
marl HUTCHINSON TECHNOLOGY for computer components is not
primarily merely a surname when the mark is considered as a whole, the Court
remanding the case for entry of a disclaimer of TECHNOLOGY before
publication.

70. Some wording may enhance rather than diminish the surname significance of
the mark. See In re Piano Factory Grp. Inc., 85 USPQ2d 1522, 1527 (TTAB 2006)
In the herein cited case, the addition of & SONS to the surname VOSE
serves only to emphasize or reinforce that VOSE is the surname of the sons
parents.

F. SURNAME COMBINED WITH DOMAIN NAME

71. A surname combined with a non-source-identifying top-level domain name

(e.g., JOHNSON.COM) is primarily merely a surname under Section 2(e)(4).
See TMEP Section 1215.03.

G. SURNAME COMBINED WITH LEGAL OR FAMILIAL ENTITY

DESIGNATION

72. The addition of wording that merely indicates the legal entity of an applicant,
such as Corporation, Inc., Ltd., Company, or Co., or the family
business structure of an applicant, such as & Sons or Bros., does not
diminish the surname significance of a term that is otherwise primarily merely a

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 surname. See In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A.
1953)

73. In fact, adding the familial entity designation & SONS to a surname was
found to emphasize or reinforce the surname significance of the mark. Piano
Factory Grp. Inc., 85 USPQ2d at 1527.

IV.EVIDENCE THAT MAY BE RELEVANT TO A SURNAME REFUSAL

A. TELEPHONE DIRECTORY LISTINGS

74. Telephone directory listings from telephone books or electronic databases are
one type of credible evidence of the surname significance of a term. The
Trademark Trial and Appeal Board has declined to hold that a minimum
number of listings in telephone directories must be found to establish a prima
facie showing that the mark is primarily merely a surname. See, e.g., In re Petrin
Corp., 231 USPQ 902, 903 (TTAB 1986); In re Wickuler-Kupper-Brauerei KGaA,
221 USPQ 469, 470 (TTAB 1983).

75. It is the American publics perception of a term that is determinative.

Therefore, foreign telephone directory listings are not probative of the
significance of a term to the purchasing public in the United States, regardless
of whether the applicant is of foreign origin. See, e.g., Socit Civile Des Domaines
Dourthe Frres v. S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6
USPQ2d 1205, 1208 (TTAB 1988); In re Stromsholmens Mekaniska Verkstad AB,
228 USPQ 968, 969 (TTAB 1986); In re Wickuler-Kupper-Brauerei, 221 USPQ at
470 n.2.

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B. LEXISNEXIS RESEARCH DATABASE EVIDENCE

76. Excerpted articles from the LexisNexis research database are one type of
credible evidence of the surname significance of a term. There is no
requirement that the examining attorney make of record every story found in a
LexisNexis search. However, the examining attorney is presumed to make the
best case possible. See In re Federated Dep't Stores Inc., 3 USPQ2d 1541, 1542 n.2
(TTAB 1987);

77. An Office action that includes any evidence obtained from a research database
should include a citation to the research service and a clear record of the
specific search that was conducted, indicating the libraries or files that were
searched and the date of the search (e.g., LexisNexis, News and Business, All
News, Aug. 5, 2007). The electronic record or printout summarizing the search
should be made a part of the record. Relevant information not included on the
summary, such as the number of documents viewed, should be stated in
narrative in the Office action. See TMEP Section 710.01(a).

C. U.S. CENSUS DATABASE EVIDENCE

78. The Census Bureau has a database of surnames taken from the most recent
decennial census. The surnames are ordered by rank, and the database lists the
number of individuals in the country having each surname. Because the
database reflects the number of individuals, rather than the number of
households, with a particular name, search results from this database may be
more persuasive evidence of surname frequency than results from telephone
directory listings.
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 (http://www.census.gov/topics/population/genealogy/data/2000_surnames.h
tml )

D. SPECIMENS CONFIRMING SURNAME SIGNIFICANCE OF

TERM

79. The fact that a term appears on the specimen of record in a manner that
confirms its surname significance is evidence of the surname significance of a
term. See Socit Civile Des Domaines Dourthe Frres v. S.A. Consortium Vinicole De
Bordeaux Et De La Gironde, 6 USPQ2d 1205, 1208 (TTAB 1988)

80. In In re Luis Caballero, S.A., 223 USPQ 355, 356-57 (TTAB 1984), it was held
that BURDONS is primarily merely a surname, the Board weighted heavily the
applicants use of Burdon on the specimen as a surname, albeit of a fictitious
character (John William Burdon)).

E. NEGATIVE DICTIONARY EVIDENCE

81. Negative dictionary evidence (i.e., evidence that a term is absent from
dictionaries or atlases) may demonstrate the lack of non-surname significance
of a term. See In re Petrin Corp., 231 USPQ 902, 903 (TTAB 1986).

F. EVIDENCE OF FAME OF A MARK

82. Evidence of the fame of a mark (e.g., evidence of consumer recognition of a

mark, or expenditures made in promoting or advertising a mark) is not relevant

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 unless registration is sought under Section 2(f). In re McDonalds Corp., 230
USPQ 304, 307 (TTAB 1986). In the McDonalds case, it was held that
McDonalds is primarily merely a surname in spite of strong secondary
meaning, with the Board stating that the word primarily refers to the primary
significance of the term, that is, the ordinary meaning of the word, and not to
the terms strength as a trademark due to widespread advertising and
promotion of the term as a mark to identify goods and/or services.

G. INTERNET EVIDENCE

83. Articles downloaded from the Internet are admissible as evidence of

information available to the general public, and of the way in which a term is
being used by the public. However, the weight given to this evidence must be
carefully evaluated, because the source may be unknown. See In re Total Quality
Grp. Inc., 51 USPQ2d 1474, 147576 (TTAB 1999).

84. When making Internet evidence part of the record, the examining attorney
must both (1) provide complete information as to the date the evidence was
published or accessed from the Internet, and its source (e.g., the complete URL
address of the website), and (2) download and attach the evidence to the Office
action. See Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).

85. Providing only a website address or hyperlink to Internet materials is

insufficient to make such materials of record. In re Powermat Inc., 105 USPQ2d
1789, 1791 (TTAB 2013); In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269,
1274 (TTAB 2012).

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86. Because of the transitory nature of Internet postings, websites referenced only
by address or hyperlinks may be modified or deleted at a later date without
notification. See Safer Inc.,94 USPQ2d at 1039.

87. Thus, information identified only by website address or hyperlink would not be
available for verification by the applicant to corroborate or refute. See In re HSB
Solomon Assocs. LLC, 102 USPQ2d at 1274.

88. A list of Internet search results generally has little probative value, because such
a list does not show the context in which the term is used on the listed web
pages. In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011).

89. In In re Tea and Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008), it was
held that truncated Google search results entitled to little probative weight
without additional evidence of how the searched term is used).

90. As long as it is written in the English language, information originating on

foreign websites or in foreign news publications that are accessible to the
United States public may be relevant to discern United States consumer
impression of a proposed mark. The probative value of such evidence will vary
depending upon the context and manner in which the term is used. In Bayer,
NEXIS evidence that originated in foreign publications was deemed to be of
some probative value with respect to prospective consumer perception in the
United States, the Court noting the growing vailability and use of the internet
as a resource for news, medical research results, and general medical
information. 488 F.3d at 969, 82 USPQ2d at 1835.

91. In In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015), it was
held that articles from non-U.S. publications have some probative value
because the case concerns the perception of the relevant consumers, i.e., the

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 general U.S. public, regarding the identity of a celebrity who lives and travels
outside of the United States).

92. With respect to evidence taken from the online Wikipedia encyclopedia, at
www.wikipedia.org, the Board has noted that [t]here are inherent problems
regarding the reliability of Wikipedia entries because Wikipedia is a
collaborative website that permits anyone to edit the entries, and has stated as
follows:

[T]he Board will consider evidence taken from Wikipedia so

long as the non-offering party has an opportunity to rebut
that evidence by submitting other evidence that may call
into question the accuracy of the particular Wikipedia
information. Our consideration of Wikipedia evidence is
with the recognition of the limitations inherent with
Wikipedia (e.g., that anyone can edit it and submit
intentionally false or erroneous information)....

As a collaborative online encyclopedia, Wikipedia is a

secondary source of information or a compilation based on
other sources. As recommended by the editors of
Wikipedia, the information in a particular article should be
corroborated. The better practice with respect to Wikipedia
evidence is to corroborate the information with other
reliable sources, including Wikipedias sources.

In re IP Carrier Consulting Grp., 84 USPQ2d 1028, 103233 (TTAB 2007).

Given its inherent limitations, any information obtained from Wikipedia

should be treated as having limited probative value. If the examining attorney

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 relies upon Wikipedia evidence and makes it of record, then additional
supportive and corroborative evidence from other sources should also be made
of record, especially when issuing final actions.

93. The examining attorney should check applicants own website for information
about the goods/services. See In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB
2006), where the Board rejected applicants argument that it was improper for
the examining attorney to rely on evidence obtained from applicants website
when the application was based on intent to use and no specimens were yet
required. According to the Board, [T]he fact that applicant has filed an intent-
to-use application does not limit the examining attorneys evidentiary options,
nor does it shield an applicant from producing evidence that it may have in its
possession.

94. When a document found on the Internet is not the original publication, the
examining attorney or Trademark Law Library staff should try to obtain a copy
of the originally published document, if practicable. Electronic-only documents
are considered to be original publications, and scanned images are considered
to be copies of original publications. Internet Usage Policy Notice, 64 Fed. Reg.
33056, 33063 (June 21, 1999).

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