Bayne Machine Works, Inc.

Trademark Trial and Appeal Board

May 11, 1999

No. 75134516 (T.T.A.B. May. 11, 1999)

Paper No. 12
PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bayne Machine Works, Inc.
________
Serial No. 75/134,516
_______
Richard M. Moose of Dority & Manning for Bayne Machine
Works, Inc.
Barbara A. Gaynor, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Hohein, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An intent-to-use application has been filed by Bayne
Machine Works, Inc. to register the mark BAYNE for
“hydraulic trash can dumpers, and adapter kits for
hydraulic trash can dumpers comprised of mounting stands
and brackets therefor, hydraulic controllers, mounting
Ser No. 75/134,516
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adapters and replacement parts therefor.”1
Registration has been finally refused under Section
2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4), on the
ground that the mark is primarily merely a surname.
Applicant has appealed. Briefs have been filed,2 but no
oral hearing was requested.
In support of the refusal to register, the Examining
Attorney made of record a printout retrieved from the
PHONEDISC U.S.A. database (1995 ed.) which shows listings
for 1,912 individuals having the surname “Bayne.” In
addition, she made of record excerpts of fifteen stories
retrieved from the NEXIS database which make mention of
individuals with the surname “Bayne.”3 Also, the Examining
Attorney submitted a page from Webster’s II New Riverside
University Dictionary (1994 ed.) which shows no entry for
“Bayne.” Finally, the Examining Attorney points to

1 Application Serial No. 75/134,516 filed July 15, 1996 under
Section 1(b) of the Trademark Act, based on applicant’s
allegation of a bona fide intent to use the mark in commerce.
2 Applicant submitted for the first time, with its brief on the
case, copies of the disclaimers entered in and the notices of
allowance for application Serial Nos. 75/134,517 and 75/134,519.
These applications are for the marks BAYNE COMBO LIFTER (COMBO
LIFTER disclaimed) and BAYNE DOUBLE WIDE LIFTER (DOUBLE WIDE
LIFTER disclaimed), respectively. The Examining Attorney
properly objected to this evidence as being untimely submitted.
See Trademark Rule. 2.142(d). Therefore, we have not considered
this evidence. Even if we had, our decision herein would be the
same.
3 According to the Examining Attorney, the search revealed over
11,000 stories of which she submitted a representative sample.
Ser No. 75/134,516
3
applicant’s own president, Jimmy O. Bayne, as evidence that
“Bayne” is a surname.
Applicant, in urging reversal of the refusal to
register, argues that the NEXIS evidence is “limited;” that
“Bayne” is a rare surname; and that “Bayne” is the phonetic
equivalent of the word “bane” which has no surname
significance. Relying on In re Benthin Management GmbH, 37
USPQ2d 1332 (TTAB 1995), where the Board found the mark
BENTHIN in a stylized presentation not to be primarily
merely a surname, applicant urges that we take into
consideration that the purchasing public for its goods is
not the general public, but a much smaller group which “is
clearly not going to have an experience base as broad as
the general public, and therefore correspondingly is less
likely to encounter the relatively rare instances of
surname usage urged by the PTO.” Brief, p. 15.
Whether a mark is primarily merely a surname depends
upon whether its primary significance to the purchasing
public is that of a surname. In re Hutchinson Technology,
Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988). The
Office has the burden of establishing prima facie that a
term is primarily merely a surname. In re Etablissements
Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985).
Ser No. 75/134,516
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Provided that the Examining Attorney establishes a prima
facie case, the burden shifts to the applicant to rebut the
showing made by the Examining Attorney. See In re Harris-
Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239-40 (CCPA
1975).
In this case, the PHONEDISC U.S.A. and NEXIS evidence
are sufficient to establish a prima facie case that BAYNE
is primarily merely a surname. With respect to the NEXIS
evidence, it is enough that the Examining Attorney
submitted a representative sample of the excerpts. As
noted by the Examining Attorney, if applicant believed that
the excerpts submitted were somehow not representative of
the over 11,000 stories located, applicant could have
conducted its own search and submitted the results thereof.
Also, as pointed out by the Examining Attorney, a
surname refusal cannot be avoided simply because the
surname is the phonetic equivalent of a word with an
ordinary meaning. See In re Pickett Hotel Company, 229
USPQ 760 (TTAB 1986). In this case, the public would
Ser No. 75/134,516
5
readily recognize that “Bayne” is not the equivalent of the
word “bane.”4
Further, we find no support in Benthin for applicant’s
contention that the purchasing public for its goods would
be less likely than the general public to recognize the
surname significance of BAYNE. In this regard, we agree
with the Examining Attorney:
The applicant puts forth neither factual
evidence nor legal precedent to support its
contention concerning its customers’
knowledge and/or experience. Moreover, it
seems that the applicant’s customers would
be even more familiar than the general
public with BAYNE used as a surname since
they are more likely to know or have contact
with the president of the applicant’s
corporation, Jimmy O. Bayne. (emphasis
in original)
Brief, p.7.
Also, this case is readily distinguishable from Benthin
because the mark here is in typed capital letters whereas
in Benthin the mark was displayed in “a highly stylized
form.”
Further, we should point out that even rare surnames
(e.g., Darty) are precluded from registration. See In re

4 The case before us is readily distinguishable from In re
Monotype Corp., PLC, 14 USPQ2d 1070 (TTAB 1989) where the
applicant sought to register the mark CALISTO, an English
variation of “Callisto,” the name of a nymph in Greek mythology.
The Board, in holding that CALISTO was not primarily merely a
surname, found that many in the public would not realize that
CASTILO is not the “correct” spelling of the mythological name
“Castillo.”
Ser No. 75/134,516
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Etablissements Darty et Fils., supra.
Finally, the fact that “Bayne” is the surname of
applicant’s president is a factor favoring a finding that
the primary significance of BAYNE is that of a surname.
Decision: The refusal to register is affirmed.
G. D. Hohein
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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