Beds & Bars Limited

Trademark Trial and Appeal Board

May 5, 2017

No. 85597669 (T.T.A.B. May. 5, 2017)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed: May 5, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Beds & Bars Limited
_____

Serial No. 85597669
_____

Michael E. Hall and Mark B. Harrison of Venable LLP,
for Beds & Bars Limited.
Ronald L. Fairbanks, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
_____

Before Quinn, Adlin and Masiello,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Beds & Bars Limited (hereinafter “Applicant”) seeks registration on the Principal
Register of the mark BELUSHI’S (in standard character format) for
travel reservation, escorting of travellers, car parking,
courier services, arranging and providing transportation
for travellers, sightseeing, information services regarding
travel (in International Class 39); and
hotel, hostel, public houses, restaurant and catering
services, reservation of temporary accommodation,
Serial No. 85597669
- 2 -

boarding houses, cocktail lounges and coffee bars (in
International Class 43).1
The Trademark Examining Attorney refused registration of Applicant’s mark
pursuant to Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4), on the
ground that the applied-for mark is primarily merely a surname.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration but
failed to address Applicant’s alternative amendment to the Supplemental Register.
Applicant then filed a request for remand. After the Examining Attorney accepted
this alternative amendment, the appeal was resumed on the sole issue of whether
Applicant’s mark BELUSHI’S is registrable on the Principal Register.
By way of additional background, the Examining Attorney, in the first Office
Action dated August 8, 2012, raised two refusals, namely, the surname refusal and a
refusal under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground
that Applicant’s mark falsely suggests a connection with John Belushi, “the late,
famous actor and comedic entertainer.” In the final refusal dated March 21, 2013, the
Examining Attorney withdrew the Section 2(a) refusal, and maintained the surname
refusal. After Applicant and the Examining Attorney briefed the surname issue, the
Board issued a remand order on December 11, 2015. The Board indicated that based
on the record a remand was in order pursuant to Trademark Rule 2.142(f) to allow

1 Application Serial No. 85597669 was filed on April 13, 2012, initially based upon 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). In Applicant’s submission of February 11, 2013,
Applicant deleted the ITU basis for filing, claimed a continuing bona fide intention to use the
mark in commerce and amended the application’s basis to Section 44(e), 15 U.S.C. § 1126(e),
based upon Community Trademark Registration No. 002476141, issued on June 5, 2003.
Serial No. 85597669
- 3 -

the Examining Attorney to consider whether registration also should have been
refused, in the alternative, under Section 2(c) of the Trademark Act, 15 U.S.C.
§ 1052(c).2 More specifically, given the evidence of record regarding the celebrity of
Jim Belushi, John’s brother, the Examining Attorney was instructed to consider
whether registration should be refused on the basis that the mark is the name of Jim
Belushi, a particular living individual whose written consent is not of record. The
appeal was suspended, and the application was remanded to the Examining
Attorney. On January 14, 2016, the Examining Attorney refused registration under
Section 2(c) as well. Ultimately, however, the Examining Attorney was persuaded by
Applicant’s response, and in an Office Action dated February 2, 2017, he withdrew
the Section 2(c) refusal. We now consider the merits of the sole issue on appeal,
namely, whether the mark sought to be registered on the Principal Register is
primarily merely a surname. We affirm that refusal to register.
I. Statutory refusal: primarily merely a surname
Section 2(e)(4) of the Trademark Act precludes registration of a mark on the
Principal Register that is “primarily merely a surname” without a showing of
acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f). A term is

2 In his brief, the Examining Attorney stated: “If the Board feels the proposed mark would
be more properly categorized as a false association with John and Jim Belushi, then the
undersigned respectfully requests remand of the application so the examining attorney may
reinstate the refusal to register under Trademark Act Section 2(a). This refusal would
preclude applicant’s request in the alternative for registration on the Supplemental Register
since Section 2(a) is an absolute bar to registration on either the Principal or Supplemental
Register. See TMEP 1203.03.” 15 TTABVUE 9. However, the Board normally will not remand
an application for consideration of a ground for refusal if the Examining Attorney, as in the
present application with respect to Section 2(a), had previously refused registration on that
ground and then withdrew the refusal. Trademark Rule 2.142(f); TBMP § 1209.01 (Jan.
2017).
Serial No. 85597669
- 4 -

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. In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1277 (TTAB 2016); In re
United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000). This expression of the test
restates the rule set forth in In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831,
184 USPQ 421, 422 (CCPA 1975) (“[A] correct resolution of the issue can be made
only after the primary significance of the mark to the purchasing public is determined
…”) and In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir.
1985). In Darty, the U.S. Court of Appeals for 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. These inquiries are not
exclusive and any of these – singly or in combination – along with any other relevant
circumstances may shape the analysis in a particular case. In re Eximius Coffee, LLC,
120 USPQ2d at 1278 (“The Board’s oft-cited ‘Benthin factors,’ see In re Benthin Mgmt.
GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995), are also examples of inquiries that
may lead to evidence regarding the purchasing public’s perception of a term’s primary
significance.”).
When we consider Section 2(e)(4) as a bar to registration of a term, we consider
the impact the 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
Serial No. 85597669
- 5 -

primary significance of a word when applied to a product is a surname significance.”
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 Pat. 1955)). Whether the
primary significance of an applied-for mark is merely that of a surname is a question
of fact. See Darty, 225 USPQ at 653-54. 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).
In this case, Applicant and the Examining Attorney have presented evidence and
arguments regarding the following inquiries: whether the term is a surname; whether
the term has any recognized meaning other than as a surname; whether the term is
the surname of anyone connected with Applicant; whether evidence shows that the
term has the structure and pronunciation of a surname; whether there is contextual
use related to surname significance; and whether the evidence shows that use of the
term as a surname is rare. See Eximius Coffee, 120 USPQ2d at 1278; see also In re
Integrated Embedded, 120 USPQ2d 1504 (TTAB 2016).3
II. Evidence
In the final Office Action dated March 21, 2013, the Examining Attorney included
the following evidence drawn from Lexis/Nexis public surname records:

3 No other factors have been discussed by Applicant or the Examining Attorney, nor is there
evidence that implicates any other possible factor, inquiry or circumstance.

Serial No. 85597669
- 6 -

The Examining Attorney also introduced evidence showing the substantial fame
of the late comedian and actor John Belushi.

On the day he turned thirty, John starred in America’s number-one movie
(Animal House), starred in the number-one late-night show (Saturday Night
Live) and had recorded the number-one album (Briefcase Full of Blues). All from
a guy who was never supposed to make it out from behind the cash register of
his family’s Chicago diner. How did this Albanian immigrant’s son capture a
nation’s imagination and come to embody all the glory and tragedy of the
American dream? It was one high-price, high-speed, short-lived wild ride.
BELUSHI is a whirlwind of a book, filled with never-before-seen photos and
provocative, intensely personal testimonials by just about every major comedic
figure of the last half century. Here is the remarkable and raucous story of a
larger-than-life figure who danced out at the precipice of American fame.
“ … [T]his surprisingly touching oral history of one of the best-
loved American comics portrays John Belushi as a rags-to-
riches hero who became a larger-than-life star before
overdosing on heroin and cocaine at the Chateau Marmont in
1982. Pisano, Belushi’s teenage sweetheart turned wife,
compiled the book from a series of interviews conducted
shortly after her 33-year-old husband’s death, and charts the
Belushi myth, as told by Dan Aykroyd, Carrie Fisher and Al
Franken, among many others, from John’s Chicago childhood
through after his death. Highlights include … the evolution of
The Blues Brothers from Saturday Night Live skit to major
label band; and the harrowing accounts of Belushi’s final
weeks. Readers will be entertained and moved by this deeply
personal account of a talented and complicated man. Family
snapshots as well as behind-the-scenes photos complement the
story.”
“Pisano’s second book on the Saturday Night Live star … drags
in an accomplice to collect quotes from eyewitnesses to John
Belushi’s life and career, combine them with dozens of photos
(including family and college shots), and present a sort of oral
history of the comedian’s riotous professional rise and abrupt,
mortal fall. It’s a humorous, nostalgic show-biz-trivia
goldmine. The thoughts of such collaborators and costars as
Chevy Chase, Tony Hendra, and Robin Williams are mixed
with those of pre-SNL friends and college acquaintances.
Lorne Michaels, Dick Ebersol, and Michael O'Donoghue
describe working with Belushi on SNL and National Lampoon
radio projects. John Landis and Tim Matheson contribute
movie memories (Belushi “did the entire [Animal House]
cafeteria line scene in one take”). Dan Aykroyd comments on
it all. Al Franken’s here, as is his oft-forgotten SNL
collaborator, Tom Davis. … ”4

4 http://www.amazon.com/Belushi-A-Biography-Judith-Pisano-ebook/dp/B007GYM86M,
attached to the Office Action of August 8, 2012; at 6-9.
Serial No. 85597669
- 7 -

John Belushi Biography • John Belushi was an actor and comedian, one of the first performers on "Saturday Night Live" and one
half of the Blues Brothers.

• Known for his legendary characters and skits on Saturday Night Live, John Belushi
imbued his brilliant performances with a manic, boisterous energy that has never seen
before or since.
• Belushi made a big splash in the Chicago comedy scene as a member of the legendary
Second City improvisational troupe. He wowed audiences with his over-the-top
impressions of Marlon Brando, singer Joe Cocker, and others.
• Lorne Michaels asked Belushi to join the cast of his new late night comedy show, Saturday
Night Live. Premiering on October 11, 1975, Saturday Night Live featured nine talented
comedians boldly going where television had not gone before. Along with Belushi, there
was Dan Aykroyd, Chevy Chase, George Coe, Jane Curtin, Garrett Morris, Laraine
Newman, and Gilda Radner. The show soon became a hit and Belushi became one of its
emerging stars. Some of his most famous characters were a sword-wielding samurai, a
killer bee, and a coneheaded alien named Kuldroth. Belushi also continued making fun of
the famous with hilarious takes on the likes of Elizabeth Taylor, Henry Kissinger, Truman
Capote, and William Shatner.
• In 1978, Belushi made the move to the big screen with the hit comedy National Lampoon’s
Animal House, directed by John Landis. Playing Bluto Blutarsky, Belushi created one of
film’s most memorable characters-the thoroughly gross, barely verbal frat brother whose
immortal lines included “toga, toga, toga” and “food fight.” The havoc created by Bluto and
the rest of his Delta House brothers against their school has become one of the most famous
college comedies of all time. 5

In turn, Applicant supplied evidence about John’s brother Jim Belushi’s decades of
celebrity as an actor, comedian, singer, and musician, and his ongoing prominence in
the popular media.

Jim Belushi: James Adam “Jim” Belushi (born June 15, 1954) is
an American actor, comedian, singer, and musician. He is best known
for playing the role of James "Jim" Orenthal on the long-running
sitcom According to Jim, and is the younger brother of late comic
actor John Belushi.
From 1977 to 1980, Belushi, like his older brother John Belushi,
worked with the Chicago theater group The Second City. During this
period, Belushi made his television debut in 1978 … from 1983 to
1985 he appeared on Saturday Night Live … many supporting roles
and lead roles … He has starred in many films ... His voice work
includes an array of titles … animation voice-overs … He also lent
his vocal talents for a PC game … TV episodes … In 2002, he was cast
as the title role in ABC's According to Jim. In 2003, Belushi and Dan
Aykroyd released the album Have Love, Will Travel, and participated
in an accompanying tour. He also performs at various venues
nationwide as Zee Blues in an updated version of The Blues Brothers.
He released his first book, Real Men Don't Apologize, in May 2006 …6

5 http://www.biography.com/#!/people/john-belushi-9206502#synopsis, attached to the Office
Action of August 8, 2012; at 16-20.
6 http://www.wikipedia.com, attached to Applicant’s response of February 11, 2013; at 5-15.
Serial No. 85597669
- 8 -

Neither Applicant nor the Examining Attorney presented any evidence showing
that BELUSHI has a meaning other than as a surname. Nor is there any evidence
that anyone connected with Applicant has the surname BELUSHI.
The Examining Attorney provided screenshots of Applicant’s webpages showing
that consistent with the recitation of services, Applicant operates bars, restaurants,
comedy clubs, pubs, hotels and hostels in the United Kingdom and elsewhere in
Europe. Among the brands touted by Beds & Bars is St. Christopher’s Inns, The
Flying Pig, Bauhaus, the Winston, and Belushi’s bars.7
III. Arguments
The Examining Attorney contends that BELUSHI is a surname, albeit a rare one.
He goes on to argue that the Belushi brothers have received “a great deal of
widespread fame, media exposure and publicity over several decades in the television
and film industries,” and that “their fame greatly increases the public’s awareness of
the Belushi surname.” 15 TTABVUE 9. More specifically, the Examining Attorney
argues:
[A]n issue to be considered in the Section 2(e)(4) analysis is
the extent to which media attention or publicity have been
accorded to public personalities who have the surname. A
surname rarely appearing in birth records may
nonetheless appear more routinely in news reports, so as
to be broadly exposed to the general public. In re Gregory,
70 USPQ2d 1792, 1795 (TTAB 2004).
In the Gregory case, Rogan S. Gregory, an individual,
applied to register ROGAN as a mark for various jewelry,
handbags and clothing items. The Board held ROGAN to
be primarily merely a surname, based in part on the
notoriety of former PTO Director James Rogan and a

7 http://www.belushis.com/, attached to the Office Action of August 8, 2012; at 2-5.
Serial No. 85597669
- 9 -

handful of other noteworthy individuals with Rogan as a
last name. The Board concluded:
The existence of these individuals with the
surname ROGAN leads us to conclude that
the name may be rare when viewed in terms
of frequency of use as a surname in the
general population, but not at all rare when
viewed as a name repeated in the media and
in terms of public perception. Accordingly, we
conclude that ROGAN is not a rare surname.
Application of the decision in Gregory to the present case
strongly favors a finding that the primary significance of
Belushi to the general public is that of a surname. While
there are fewer individuals with the surname, the fame
and media attention accorded to individuals who have or
have had the surname is rather significant.
Examining Attorney’s Appeal Brief, 15 TTABVUE 7-8. The Examining Attorney
concludes that John and Jim Belushi’s fame greatly increases the public’s awareness
of the Belushi surname.
Applicant argues that the Examining Attorney’s
reasoning is flawed because all of the Examining
Attorney’s statements regarding the significance of
BELUSHI’S are at odds with his conclusion it is primarily
merely a surname. Simply put, if BELUSHI’S brings to
mind the famous Belushi brothers, then it cannot be
primarily merely a surname. If it were primarily merely a
surname to the public, it would not bring to mind anyone
in particular …. The primary significance of Applicant’s
mark BELUSHI’S cannot be a reference to the Belushi
brothers while simultaneously being merely that of a
surname. It is a logical impossibility.”

Applicant’s Appeal Brief, 13 TTABVUE 6. Applicant’s other main point focuses on the
“extreme rarity” of the surname: “because there are only five people in the entire
United States with the surname Belushi, substantially no one will be adversely
affected by the registration of Applicant’s mark BELUSHI’S.” 13 TTABVUE 7.
Serial No. 85597669
- 10 -

IV. Analysis
The Examining Attorney has demonstrated that BELUSHI is an actual surname;
and there is no evidence showing that it has any alternative meaning.
The Examining Attorney contends that BELUSHI has the structure and
pronunciation of a surname; however, his position is unsupported by any evidence.
See Eximius Coffee, 120 USPQ2d at 1280 (reference to similar purported surnames
“without proving that they are surnames, without showing how common such
surnames . . . are, and without providing some other objective evidence of how
members of the public perceive the structure and sound of ALDECOA is not sufficient
to enable us to determine that ALDECOA has a structure and pronunciation similar
to that of other purportedly common surnames”). With respect to this difficult type of
argument, we would require evidence, whether from Applicant or the Examining
Attorney, bearing on how members of the public would perceive the structure and
sound of BELUSHI and whether they would be likely to perceive the proposed mark
as similar or dissimilar in structure and sound to other surnames, common words or
coined terms.
Insofar as contextual clues are concerned, the mark BELUSHI’S includes the
surname BELUSHI in the possessive form (i.e., with an apostrophe “s”). This is
consistent with perception of the term as a surname. Azeka Building Corp. v. Bryan
Kenji Azeka, ___ USPQ2d ___, Opp. No. 91218679 (TTAB May 3, 2017); In re Binion,
93 USPQ2d 1531, 1537 (TTAB 2009).
At the outset of our consideration of the rarity of the surname as viewed against
the backdrop of public exposure to the surname, we note, on the one hand, that
Serial No. 85597669
- 11 -

according to the Lexis/Nexis evidence supplied by the Examining Attorney, only five
people in the U.S. are named BELUSHI, establishing that it is an exceedingly rare
surname. On the other hand, the celebrity of John Belushi and the continuing media
attention on Jim Belushi support a finding that a substantial portion of Americans
know BELUSHI to be a surname.
Even a rare surname may be held primarily merely a surname if its primary
significance to purchasers is that of a surname. In this case, the rare surname
BELUSHI is so well-known as a result of media publicity that it would be
immediately recognized as a surname. See In re Gregory, 70 USPQ2d at 1795. The
relevant question is not simply how frequently a surname appears, however, but
whether the purchasing public for Applicant’s services is more likely to perceive
Applicant’s proposed mark as a surname rather than as anything else. How
frequently it has been exposed to the purchasing public as a surname, thereby
causing consumers to recognize it as such, is also of relevance in this case. In In re
Gregory, supra, for example, the record revealed appreciable media exposure afforded
to individuals bearing the surname “Rogan,” including Baseball Hall of Famer Wilber
Rogan, author Barbara Rogan, actors Seth Rogan and Joe Rogan, and former
Congressman and USPTO Director James Rogan. Based on such evidence of wide
public exposure, the Board concluded that “the name [Rogan] may be rare when
viewed in terms of frequency of use as a surname in the general population, but not
at all rare when viewed as a name repeated in the media and in terms of public
perception.” Id. at 1795.
Serial No. 85597669
- 12 -

Similarly, in this case, although BELUSHI is a rare surname in terms of the
number of people in the U.S. with that name, it is anything but rare when we consider
how many consumers have been exposed to it as a surname, often repeatedly, over
the years. Simply put, the evidence shows that John Belushi was a major celebrity,
and that Jim Belushi has enjoyed his own success. Indeed, the Examining Attorney’s
evidence “reflect[s] the broad exposure that would place a rarely encountered
surname more frequently in the public eye.” In re Eximius Coffee, 120 USPQ2d at
1281 (and cases cited thereat). See Gregory, 70 USPQ2d at 1795.
Applicant argues to the contrary, contending that this case is more akin to In re
Pyro-Spectaculars Inc., 63 USPQ2d 2022 (TTAB 2002). There the Board concluded
that the applicant was entitled to registration of SOUSA as a trademark for fireworks
and entertainment services featuring pyrotechnics, even though the Examining
Attorney established a prima facie case that the mark was primarily merely a
surname by showing that SOUSA is a surname in current use in the United States.
In that case, the surname refusal was reversed based on the applicant’s evidence,
including news articles showing the continuing fame of the historical band leader and
composer John Philip Sousa, because the applicant’s fireworks and shows featuring
pyrotechnics were the types of goods and services that potential purchasers would
associate with patriotic events, figures, and music, and because the primary
significance of SOUSA, as used in connection with the applicant’s goods and services,
was as the name of a person well known in United States history for his patriotic
music. Here, by contrast, although John and Jim Belushi are widely known to
Americans, the evidence does not show that they qualify as historical figures closely
Serial No. 85597669
- 13 -

associated with Applicant’s services in the manner shown in Pyro-Spectaculars. Id.
at 2024 (“[I]n cases involving historical names, the Board has drawn a line between
those names considered so widely recognized as to be ‘almost exclusively associated
in terms of commercial impressions with the historical figures’ and those names
‘semihistorical in character.’ . . . But even when such a line was drawn, the ultimate
issue to be determined was still that of the primary significance of the mark in
question to the purchasing public.” (quoting In re Pickett Hotel Co., 229 USPQ 760,
761 (TTAB 1986)).
Examining the entire record to determine the primary significance of the term
BELUSHI’S, we find that the Examining Attorney has demonstrated that
BELUSHI is a surname, which while rare has nevertheless enjoyed widespread
public exposure, given the Belushi brothers’ fame. Further, we find that the term
BELUSHI has no other “ordinary language meaning,” and that Applicant has failed
to demonstrate that the term has another significance that is its primary significance
as perceived by the public. We conclude, therefore, that BELUSHI’S is primarily
merely a surname and that the refusal to register the mark on the Principal Register
must be affirmed.
Decision: The refusal to register Applicant’s proposed mark BELUSHI’S on the
Principal Register pursuant to Section 2(e)(4) of the Trademark Act is affirmed.
Applicant’s alternative request to amend this application to one seeking
registration on the Supplemental Register is accepted and will be entered. A
registration on the Supplemental Register will issue in due course.