A couple of weeks ago, the Board issued a decision (although not precedential) that will be helpful to those applicants submitting Responses to Office Actions to surname refusals, see In re Fair Isaac Germany GmbH, Serial No. 87424333 (May 28, 2019). This case is interesting because it reverted back to placing emphasis on the rareness factor (see our blog post entitled, TTAB’s Precedential Decision That Further Shifts Surname Case Law). In addition, it accorded particular weight to the fact that no one associated with the applicant used the mark as a surname. Finally, I believe this decision may be the tipping point wherein the Board has determined that simply pointing out that no dictionary definition exists for the mark, will not be sufficient to prove that the mark will be perceived primarily as a surname with no other meaning.
In this case, the applicant was attempting to register the mark SIRON for anti-fraud computer software. Among the factors to be considered in determining whether a term is primarily 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]. For more information on this topic, see the firm page entitled, Can You Use Your Name As A Trademark?
These factors are not exclusive, any relevant circumstances may be considered in the determination. There is no rule about the kind or the amount of evidence that is necessary to show that the applied for mark would be perceived as primarily a surname. If there are any doubts, doubts should be resolved in favor of the applicant. See In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995).
The Examining Attorney refused the mark SIRON as primarily merely a surname under Section 2(e)(4) of the Trademark Act, 15 U.S.C. §1052 (2)(4). The refusal was made final, and the applicant requested reconsideration, and appealed the matter. The Examining Attorney introduced evidence that the mark appeared 484 times in the LEXISNEXIS database of cell phone numbers, that there was no dictionary definition for SIRON, SIRON appeared on FACEBOOK® 15 times and 19 times as a surname in the LEXISNEXIS newspaper database, and submitted evidence of several online profiles for people with the last name SIRON. Even though the Examining Attorney introduced evidence that SIRON appeared 523 times as a surname in the U.S., the Board held that this was a relatively rare surname. Also, despite the newspaper articles, the Board found SIRON was not the name of a well-known person.
Regarding the third factor, applicant suggested that although there is no dictionary definition for SIRON, it will likely be perceived as a coined term as a “play” on the word “siren”, suggesting a sense of urgency considering the goods are anti-fraud software. In connection with the fourth factor, having the look and feel of a surname, this is a subjective inquiry. Applicants and Examining Attorneys need to submit evidence that show due to a term’s structure or pronunciation the pubic would either perceive or not perceive it to have surname significance.
The Examining Attorney in support of the fourth factor, argued that SIRON is very similar to other surnames SIRON OR SERON. The Board disagreed stating, “we do not find that SIRON is more similar in structure and pronunciation to surnames SIRON AND SERON than it is to the word “siren”.” The Board concluded that at best the fourth factor was neutral. In the end, the Board found that the record did not establish that the primary significance of SIRON was a surname. Since the Board had doubt, it resolved it in favor of the applicant as required by precedent. If you have questions concerning surnames or other trademark registration questions, please feel free to contact the firm for a courtesy consultation.