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TTAB’s Precedential Decision That Further Shifts Surname Case Law

Trademark practitioners can barely keep up with the decisions being issued by the Trademark Trial and Appeal Board (“TTAB” or the “Board”) in the area of surnames. In relatively recent times, the TTAB was focusing on the importance of the rareness of the surname. Then in the spring of this year, another shift occurred where the rareness factor was deemphasized with regard to the number of people having a surname the same as the mark. See the case of In re Beds & Bars Limited, 122 USPQ2d 1546 (TTAB 2017) [precedential]. Instead, the Board is now focusing on the media exposure of any “famous” or “public” figure with the surname the same as the proposed mark.

Multiple factors are considered to evaluate whether a trademark will be perceived as a last name. Among the factors to be considered in determining whether a term is primarily merely a surname are the following: (i) whether the surname is rare; (ii) whether anyone connected with applicant uses the term as a surname; (iii) whether the term has any other recognized meaning other than a surname; and (iv) whether the term has the “look and feel”’ of a surname or the structure and pronunciation of a surname; and (v) whether the term is sufficiently stylized to remove its primary significance of that of a surname. In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000). See also, Miller v. Miller, 105 USPQ2d 1615 (TTAB 2013) [precedential].

In re Bed & Bars Limited, cited above, the proposed mark BELUSHI identified hotel, travel and restaurant services. Evidence was presented that only five people in the U.S. have the surname Belushi, and no one affiliated with the Applicant had the name Belushi. Yet the Examiner refused the mark on the Principal Register, finding it to be primarily merely a surname. The Board affirmed this 2(e)(4) refusal, focusing on the fame and publicity surrounding John and Jim Belushi (aka the Belushi brothers), arguing that their celebrity lives increase the public awareness of the surname.

Another factor the Board emphasized was that the mark was BELUSHI’S (with an apostrophe “s”), and that this would be a clue to the public that the term was a surname. In fact, the Board stated that “[t]his is consistent with perception of the term as a surname”. See Azeka Building Corp. v. Brian Kenji Azeka, ___USPQ2d___, Opposition No. 91218679 (TTAB May 3, 2017), where the mark AZEKA’S RIBS was held to be primarily merely a surname. The apostrophe “s” was considered a contextual clue that the mark would be perceived as a surname. There were approximately 866 individuals using the last name Azeka. Moreover, three websites were introduced into evidence and the Board held that the websites demonstrated use of the term “Azeka” as a surname. The Board focused on the fact that there was public exposure in the media involving the Azeka name. In this case, there was nothing in the record to show the term Azeka would have another meaning other than primarily merely a surname.

More recently, the Board seems to be underscoring the fact that even a very rare surname may be perceived as primarily merely a surname, if the name is well known due to media publicity. In other words, if the name is associated with a celebrity, athlete, famous academic, politician etc., the public will have more familiarity with the name in the context of a surname. This will diminish the significance of other meanings of the proposed mark.

Applicants and their counsel will need to be aware of this shift in TTAB decisions when adopting marks. Of course, if an applicant is unsuccessful in persuading the Examining Attorney that the proposed mark has meaning other than a surname, typically an amendment can be made requesting registration on the Supplemental Register. A mark on the Supplemental Register receives some benefits, but an applicant should always aim for registration on the Principal Register. See our blog post entitled, How To Avoid The Supplemental Register If The Mark Consists Of A Surname. If you have any further questions on surnames or other trademark inquiries, please contact our office for a courtesy consultation.