Anthem Vault, Inc.

Trademark Trial and Appeal Board

Sep 30, 2016

No. 86638196 (T.T.A.B. Sep. 30, 2016)

This Opinion Is Not a
Precedent of the TTAB

Mailed: September 30, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Anthem Vault, Inc.
_____

Serial No. 86638196
_____

Matthew H. Swyers of The Trademark Company, PLLC,
for Anthem Vault, Inc.
Robin S. Chosid-Brown, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Zervas, Cataldo and Goodman,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Anthem Vault, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark HAYEK (in standard characters) for “financial technology services, namely,
virtual currency,” as amended, in International Class 36.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
on the ground that (i) it is primarily merely a surname under Section 2(e)(4) of the

1 Application Serial No. 86638196, filed May 21, 2015, based on Applicant’s allegation of a
bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
Serial No. 86638196
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Trademark Act, 15 U.S.C. § 1052(e)(4), and (ii) the recitation of services is
unacceptable as indefinite. Trademark Rule 2.32(a)(6), 37 C.F.R. §2.32(a)(6);
TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) §1402.01 (2016).
When the refusal was made final, Applicant appealed. We affirm the refusal to
register under Section 2(e)(4) and the requirement to further amend the recitation of
services.
Primarily Merely a Surname
A term is primarily merely a surname if, when viewed in relation to the goods or
services for which registration is sought, its primary significance to the purchasing
public is that of a surname. See In re United Distillers plc, 56 USPQ2d 1220, 1221
(TTAB 2000). When we are faced with a Section 2(e)(4) refusal of a term in standard
character form, with no other literal or design elements, we consider the impact the
applied-for term has or would have on the purchasing public because “it is that impact
or impression which should be evaluated in determining whether or not the primary
significance of a word when applied to a product is a surname significance. If it is,
and it is only that, then it is primarily merely a surname.” In re Harris-Intertype
Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975) (quoting Ex parte Rivera Watch
Corp., 106 USPQ 145, 149 (Comm’r Pats. 1955)).
Because Applicant did not submit any evidence to rebut the Examining Attorney’s
evidence, we review to determine whether the Examining Attorney established a
prima facie case that “Hayek” is primarily merely a surname. Whether the primary
significance of an applied-for mark is merely that of a surname is a question of fact.
Serial No. 86638196
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See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653-54 (Fed. Cir.
1985). There is no rule as to the kind or amount of evidence necessary to make out a
prima facie showing that the applied-for mark would be perceived as primarily
merely a surname. This question must be resolved on a case-by-case basis. Id. at 654;
see also, e.g., In re Pohang Iron & Steel Co., 230 USPQ 79, 79 (TTAB 1986). The entire
record is examined to determine the primary significance of a term.
In Darty, the Federal Circuit considered several factors in determining whether
the purchasing public would perceive a proposed mark as primarily merely a
surname, including: whether the applicant adopted a principal’s name and used it in
a way that revealed its surname significance; whether the term had a nonsurname
“ordinary language” meaning; and the extent to which the term was used by others
as a surname. 225 USPQ at 653. The Board’s oft-cited “Benthin factors,” see In re
Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995), also are examples of
inquiries that may lead to evidence regarding the purchasing public’s perception of a
term’s primary significance.2 As stated in In re Eximius Coffee, LLC, ___ USPQ2d
____, Serial No. 86262060, slip op. at 3-4 (TTAB Sept. 27, 2016), and In re Integrated
Embedded, ___ USPQ2d ____, Serial No. 86140341, slip op. at 3 n.4 (TTAB Sept. 27,
2016), these “factors” are not exclusive, and any of these circumstances – singly or in

2 In Benthin, the Board stated that “factors” to be considered in determining whether a
term is primarily merely a surname include (1) the degree of a surname’s rareness;
(2) whether anyone connected with applicant has that surname; (3) whether the term has
any recognized meaning other than that of a surname; (4) whether the term has the
“structure and pronunciation” of a surname; and (5) whether the stylization of lettering
is distinctive enough to create a separate commercial impression. Where, as here, the
mark is in standard characters, it is unnecessary to consider the fifth factor. In re Yeley, 85
USPQ2d 1150, 1151 (TTAB 2007).
Serial No. 86638196
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combination – and any other relevant circumstances may shape the analysis in a
particular case.3
We now turn to the factors relevant to this appeal.
Is HAYEK Rarely Encountered as a Surname
Our first factor is the frequency and public exposure of the term’s surname use.
Only the Examining Attorney introduced evidence as to whether “Hayek” is rarely
encountered as a surname by the consuming public, which in this case is composed of
persons in the financial technology field; Applicant did not introduce any evidence in
prosecuting its application.
The record indicates that a search on the Nexis database for “Public Records :
Surname” by the Examining Attorney located 1924 as a total number of persons with
the surname HAYEK.4 In addition, Applicant represented in its brief that “According
to HowManyofMe.com, there are only 1,888 instances in the United States” wherein
the term HAYEK is used as a surname.5 The Examining Attorney stated she agrees

3 See Benthin, 37 USPQ2d at 1333 (stating that notwithstanding the rareness of BENTHIN
as a surname, panel “would find” that it “would be perceived as primarily merely a surname”
because of lack of other meanings and because it is the name of applicant’s Managing
Director, but the highly stylized form shifted the balancing of factors to a finding that
BENTHIN is not primarily merely a surname).
4 First Office Action.
5 The evidentiary record in an application should be complete prior to the filing of an ex parte
appeal to the Board. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); § 207.01 TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) 2016 (2016). Because the
Examining Attorney also relies on the results from HowManyofMe.com in her brief, and
because the results are similar to the results located on the Nexis database, we consider the
Applicant’s representation from HowManyofMe.com as corroborating the number of persons
in the United States with the surname “Hayek.”
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with Applicant that “[a]ccording to HowManyofMe.com, there are only 1,888
instances in the United States wherein the term HAYEK is used as a surname.”6
Further, the Examining Attorney made of record webpages concerning persons
with the surname “Hayek.” The webpages identify the following individuals and
information about their lives:

• Salma HAYEK, an actress who starred “opposite Antonio Banderas in the
now cult classic Desperado (1995), which put her on [the] Hollywood map.
… [S]he was cast again by Rodriguez to star in his From Dusk Till Dawn
(1996). Although her vampy role opposite George Clooney and Quentin
Tarantino was a small one, it was a good credit to her box office name.
Hayek’s first star billing came later that year with Fools Rush In (1997)
opposite Friends (1994) actor Matthew Perry. The film was a modest hit,
and Hayek continued to rise her star in both commercial and artistic films
such as: Breaking Up (1997) with an unknown Russell Crowe; 54 (1998)
about the rise and fall of the legendary New York club; Dogma (1999),
playing the muse in a somewhat odd comedy co-starring Matt Damon and
Chris Rock; In the Time of the Butterflies (2001), the small artistic film
which won an Hayek an ALMA award as best actress; and the 1999 summer
blockbuster Wild Wild West (1999). Her production company “Ventanarosa”
produced the 1999 Mexican feature film No One Writes to the Colonel (1999),
which was shown at the Cannes Film Festival and selected as Mexico’s
official Oscar entry for best foreign film.”7
Other notable information from this source includes:
o “As the announcer for the Oscars 2007, she announced
Penelope Cruz’ nominations for Best Actress for Volver
(2006)”; and
o “Nominated for the Best Actress in a Leading Role
Academy Award, for her performance in Frida (2002).”8

6 Applicant’s brief at 6, 4 TTABVUE 7.
7 Final Office Action, http/www imdb.com/name/… .
8 First Office Action, Google web cache, from www. econlib.org.
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• Nicholas Hayek, former CEO of Swatch from 1985 to 2003, who is credited
with resurrecting the Swiss watch industry.9
• Freidrich August Hayek (1899-1992) – an economist who made
contributions in political theory, psychology, and economics. In 1974, he
shared the Nobel Prize in economics.
Based on the foregoing, we find that HAYEK is not rarely encountered as a
surname, and therefore it is likely to be perceived by the public to have surname
significance. See Darty, 225 USPQ at 653 (“In addition, the examiner made of record
evidence that others in a number of cities in this country bear the surname DARTY.
Thus, as a surname, DARTY is not so unusual that such significance would not be
recognized by a substantial number of persons.”).
Does HAYEK Have Any Recognized Meaning Other Than As a Surname

The dictionary entry for “hayek” from the online version of Merriam-Webster
Dictionary identifies “hayek” as “Friedrich (August) von 1899–1992 British
(Austrian-born) econ.”10 This dictionary entry reflects that there is no recognized
meaning that overshadows its surname significance.
Is HAYEK the Surname of Anyone Connected with Applicant

We next consider whether anyone who has a publicly known connection with
Applicant has the surname “Hayek.” There is no evidence in the record that anyone
connected with Applicant uses the term as a surname. The Examining Attorney
directs us to an article from PRNewswire entitled “Anthem Vault Launches

9 Final Office Action, Google web cache, from www.Forbes.com.
10 First Office Action.
Serial No. 86638196
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HayekGold, a Metal-Backed Cryptocurrency That Enables Safe Peer-To-Peer
Transactions,” however, that states:
Inspired by Nobel Prize winning Austrian economic author
and academic thought leader, Friedrich A. Hayek - a
household name in the world of free market economics -
HayekGold simplifies gold into a digitized asset that’s easy
to manage in a global market.11
Applicant is not the source of this article and hence we do not attribute the
statement about the inspiration for the name to Applicant. Further, this article is
about someone not connected with Applicant; it does not suggest that someone who
has a publicly known connection with Applicant has the surname “Hayek” or that the
economist Friedrich A, Hayek is connected with Applicant. We therefore find that the
evidence of record is inconclusive as to whether there is a publicly known connection
with the surname HAYEK.
Conclusion
We find that the record establishes that the primary significance of HAYEK to the
purchasing public for Applicant’s goods is merely that of a surname within the
meaning of Section 2(e)(4) because it is the surname of not an insignificant number
of persons in the United States, is the surname of several notable persons and there
is no recognized meaning that overshadows its surname significance. We therefore
hold that Applicant’s proposed mark would be perceived by the public as primarily
merely a surname under Section 2(e)(4).

11 First Office Action.
Serial No. 86638196
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Identification of Services Indefinite
The Examining Attorney maintains that the amended recitation of services,
“financial technology services, namely, virtual currency,” is indefinite because the
nature of the services is unclear. According to the Examining Attorney:
A virtual currency is digital money that is for use by the
members of an online community. The applicant’s clients,
or “community,” purchase gold from the applicant and in
return, the applicant provides a gold-backed virtual
currency that is savable or spendable within the
community. … If the applicant’s services involve a virtual
currency, as amended, then the applicant is required to
indicate that the virtual currency is “for use by members of
an on-line community via a global computer network,” in
order to indicate the function of the virtual currency ….12
Because Applicant did not address this requirement in its appeal brief, and
because the Examining Attorney’s addition provides more specificity to the amended
recitation of services, the Examining Attorney’s requirement to further amend the
recitation of services is sustained. See Trademark Rule 2.32(a)(6).
Decision: The refusal to register Applicant’s mark HAYEK is affirmed on the
ground that the proposed mark is primarily merely a surname and on the ground
that Applicant has not complied with the Examining Attorney’s requirement to
further amend the recitation of services.

12 Examining Attorney’s brief at unnumbered pp. 5-6, 6 TTABVUE 6-7.