Bonnier-forlagen Aktiebolag

Trademark Trial and Appeal Board

Dec 27, 2016

No. 86292577 (T.T.A.B. Dec. 27, 2016)

Mailed: December 27, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bonnierforlagen Aktiebolag
________

Serial No. 86292577
_______

Betsy D. Proffitt and Scott Havlick of Holland & Hart LLP,
for Bonnierforlagen Aktiebolag.

Margery A. Tierney, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_______

Before Cataldo, Ritchie, and Hightower,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Applicant, Bonnierforlagen Aktiebolag, seeks registration of the mark KEPLER, in
standard characters, on the Principal Register for the following goods and services:1
International Class 9: computer game software; pre-recorded electronic
media featuring electronic publications, namely, books, magazines and
newspapers in the field of fiction; pre-recorded electronic media
featuring motion picture films, cinematographic films, animated
cartoons in the form of cinematographic films; CDs and DVDs featuring
fiction movies; downloadable computer software for reading electronic

1 Application Serial No. 86292577 was filed on May 27, 2014 under Section 1(b) of the
Trademark Act, based on Applicant’s assertion of a bona fide intent to use the mark in
commerce in all classes of goods and services.

This Opinion is not a
Precedent of the TTAB
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publications, namely, stories, magazines, newspapers, books and
articles in the field of fiction; motion picture films, cinematographic
films, animated cartoons in the form of cinematographic films; mobile
electronic devices used for the reading of texts, images, audio and video;
downloadable electronic publications, namely, newspapers and
magazines featuring fiction, journals in the nature of fiction and books
in the nature of fiction, all in electronic form or distributed online or via
a multimedia network; none of the above including or being trade
journals or publications intended for the pharmaceutical and packaging
industry;

International Class 16: Printed matter, namely, books, magazines and
newspapers in the field of fiction; books in the nature of fiction;
collectible newspapers, magazines featuring fiction, posters and playing
cards; printed instruction and educational materials in the field of
fiction; photographs; binders; newspapers and magazines featuring
fiction; none of the above including or being trade journals or
publications intended for the pharmaceutical and packaging industry;

International Class 25: Clothing, namely, shirts, pants, socks, stockings,
skirts, sweaters, suits, underwear, coats, swimming suits, bathing
ropes, gloves, scarves, pajamas, footwear, headgear, namely, hats, caps,
bandanas;

International Class 28: Games and playthings, namely, modeled plastic
toy figurines; toys, namely, action figure toys, drawing toys, plastic
character toys, toy figures, toy weapons, plush toys; puzzles; board
games, card games, quiz games, hand held units for playing video games
other than those adapted for use with an external display screen or
monitor; and

International Class 41: Providing on-line non-downloadable
publications in the nature of books, magazines, newspapers, and
articles in the field of fiction; providing on-line electronic games;
showing of films, namely, displaying a series of films; film production,
other than advertising films; production of television and cinema films;
theater productions.

The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4), on the ground that
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the mark is primarily merely a surname.2 When the refusal was made final, Applicant
appealed and requested reconsideration. When the request for reconsideration was
denied, the appeal was resumed. Applicant and the Examining Attorney filed briefs.
We affirm the refusal to register.
Section 2(e)(4) Surname Refusal
Section 2(e)(4) of Trademark Act precludes registration of a mark which is
“primarily merely a surname” on the Principal Register without a showing of
acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f). “The test
for determining whether a mark is primarily merely a surname is the primary
significance of the mark as a whole to the purchasing public.” In re Hutchinson
Technology Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988). 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). On appeal, we must weigh all of the evidence from the
Examining Attorney and the Applicant to determine whether the mark is primarily
merely a surname. See In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB
1994).
The Board’s oft-cited “Benthin factors,” see In re Benthin Mgmt. GmbH, 37
USPQ2d 1332, 1333-34 (TTAB 1995), are examples of inquiries that may lead to

2 The refusal was made after the application was initially sent to publication.
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evidence regarding the purchasing public’s perception of a term’s primary
significance.3 In Etablissements Darty et Fils, 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 therein
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. We
consider these and any other relevant factors in turn. Id.; see also In re Integrated
Embedded, 120 USPQ2d 1504, 1506 (TTAB 2016) (affirming refusal of BARR GROUP
for various IT and other services as being primarily merely a surname).
The Examining Attorney submitted evidence that there are 100 entries for the
surname Kepler in a nationwide directory of names.4 The Examining Attorney also

3 In Benthin, the Board stated that inquiries or “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 t h a t 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). These inquiries or factors are not
exhaustive and are not presented in order of importance. We make our determination on a
case-by-case basis, and any of the “Benthin factors” – singly or in combination – and any other
relevant circumstances may shape the analysis in a particular case. 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 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 Attached to April 20, 2015 Office Action, at 2.
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submitted evidence to show that Kepler is perceived as a surname. This includes an
entry from HouseofNames.com, which reads, in relevant part:5
The name Kepler, which is a local surname, reveals that the original
bearer of the name once lived, held land, or was born in the beautiful
region of Bohemia, which is now part of Czechoslovakia. . . .
Spelling variations of this family name include: Keppler, Kaepller,
Kaepler, Kaeppel, Keppel, Kepel, Kepele, Keppner and many more.

The Examining Attorney also submitted evidence of 115,899 historical documents on
Ancestry.com, including 22,151 listings of births, marriages and deaths.6
Applicant argues that KEPLER would not be recognized as a surname because it
is rare. Applicant further argues that even if it is a surname, the primary significance
of KEPLER to consumers of its goods would be as referring to a historical figure, the
astronomer Johannes Kepler.7 In this regard, the record contains the following
dictionary definitions of KEPLER:
Kepler: 1. Johann [sic], 1571-1630, German astronomer. 2. A crater in the
second quadrant of the face of the moon having an extensive ray system; about
22 miles (35 km) in diameter.8

Kepler: 1. A small crater in the NW quadrant of the moon, centre of a large
bright ray system.

Kepler in Science: German astronomer and mathematician who is considered
the founder of celestial mechanics. He was first to accurately describe the
elliptical orbits of Earth and the planets around the Sun and demonstrated
that planets move fastest when they are closest to the Sun. He also established
that a planet’s distance from the Sun can be calculated if its period of
revolution is known.9

5 Attached to April 24, 2016 Denial of Request for Reconsideration, at 20.
6 Attached to April 20, 2015 Office Action, at 5.
7 8 TTABVUE 9.
8 Dictionary.com; Attached to April 20, 2015 Office Action, at 7.
9 Dictionaryreference.com; Attached to April 20, 2015 Office Action, at 8.
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A Wikipedia entry for Johannes Kepler includes the following:
Johannes Kepler (German December 27, 1571-November 15, 1630) was a
German mathematician, astronomer, and astrologer. A key figure in the 17th
century scientific revolution, he is best known for his laws of planetary motion
. . . . These works also provided one of the foundations for Isaac Newton’s theory
of universal gravitation.10

The Wikipedia entry (corroborated by other evidence from Applicant) also refers to
several things that are named in honor of Johannes Kepler, including the NASA
Kepler mission, as well as “a crater on the moon.”11
Relying on this evidence, Applicant argues that consumers would perceive the
term KEPLER not as primarily merely a surname, but as referring to the historical
figure, Johannes Kepler. Applicant refers to In re Pyro-Spectaculars Inc., 63 USPQ2d
2022 (TTAB 2002) (SOUSA for fireworks not primarily merely a surname). In that
case, the Board found that “[t]he primary significance of the term SOUSA, as used in
connection with these goods and services, is as the name of a specific person well
known in history for his patriotic music,” specifically John Philip Sousa. Id. at 2024.
Thus, although Sousa is a surname, such is “secondary in significance when
consideration is given to the particular nature of applicant’s goods and services.” Id.
A similar result was reached in Lucien Picccard Watch Corp. v. Since 1868 Crescent
Corp., 314 F.Supp. 329, 165 USPQ 459, 461 (SDNY 1970) (DA VINCI not primarily
merely a surname as registered for personal jewelry, clothing and “boutique items”).

10 http://en.wikipedia.org; attached to April 20, 2015 Office Action, at 10.
11 Although Applicant argues that the latter dictionary definition presents an ordinary, non-
surname meaning, it appears, rather, to be associated with Johannes Kepler, after whom the
crater was named. See also evidence presented by Applicant in its September 17, 2015
Response to Office Action, at 11-30.
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In that case, the Court noted that “names of historical characters or noted persons
are registrable, provided the primary connotation of the mark is of the historical
character.” Id. The Court explained that
[T]he name Da Vinci, even without the given name Leonardo, comes
very near having as its exclusive connotation the world-renowned [sic]
15th century artist, sculptor, architect, musician, engineer and
philosopher . . . and hardly suggests that he personally had something
to do with the designing of plaintiff’s luggage.

Id. Indeed the Court took note of only two telephone directory listings in the record
for the surname Da Vinci.
By contrast, the Board has distinguished what it terms figures which are “semi-
historical.” See Pyro-Spectaculars, 63 USPQ2d at 2023 (citing In re Champion Int’l
Corp., 229 USPQ 550, 551 (TTAB 1985) (affirming refusal of MCKINLEY for
decorative paneling as primarily merely a surname)). In Champion, the Board found
that although McKinley was the historical name of a U.S. president, with several
places named after him, including a mountain, “19 cities and towns,” and “149
schools, 1 bay, 1 hospital, etc.,” there was insufficient evidence of public exposure to
the term as uniquely pointing to the historical figure rather than as being primarily
merely a surname. Id. A similar result was reached in In re Thermo LabSystems Inc.
85 USPQ2d 1285 (TTAB 2007) (affirming refusal of WATSON for laboratory
information management software as being primarily merely a surname). Applicant
in Thermo LabSystems asserted that consumers would associate its goods with
historical figure James Dewey Watson, who was awarded a Nobel Prize for his work
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in helping to discover the helical structure of the DNA molecule. The Board, however,
noted that any association by the public with this past figure was by no means clear:
All we have is applicant’s argument on this point. We have no direct
evidence that either the broader class of prospective purchasers
indicated by applicant’s identification or the specific class of asserted
actual purchasers would make such an association.

Id. at 1289.

In line with these cases, we find that the evidence here indicates that Johannes
Kepler, while well known as an astronomer, would fall within the realm of a “semi-
historical” figure.12 Although his renown rises to the level of having a dictionary
definition and several things named for him, KEPLER is analogous to MCKINLEY
as discussed in Champion, 229 USPQ at 551. This is particularly so given the facts of
Applicant’s use. Specifically, Applicant and the Examining Attorney argue as to
whether anyone affiliated with Applicant uses the surname Kepler. Applicant admits
that “Applicant uses the mark KEPLER within the pseudonym it invented, Lars
Kepler, to represent a husband and wife writing team who together author a series
of books about a Chief Inspector from Stockholm. See Exhibit 5.”13 Exhibit 5, which
is Applicant’s website, further states that “[t]o date, the Kepler books have sold five
million copies worldwide.”14 It is immaterial that Lars Kepler is a pseudonym rather
than the actual name of the authors, since it is the name by which Applicant is known

12 The facts are also distinguishable from another case cited by Applicant, Michael S. Sachs
Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) (M.C. ESCHER not primarily
merely a surname). As the Board noted there, the mark at issue was a full name, “which
would be no more perceived as primarily merely a surname than the personal names P.T.
Barnum, T.S. Eliot, O.J. Simpson, I.M. Pei and Y.A. Tittle.”
13 September 17, 2015 Response to Office Action, at 4.
14 Id. at 10.
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to millions of consumers. Furthermore, although Applicant states on its website that
it chose the surname Kepler as an homage to Johannes Kepler,15 there is no evidence
that consumers would themselves make this association, given that none of the goods
or services identified appear to be related to astronomy and the laws of planetary
motion, for which Johannes Kepler is best known.
The record thus establishes that Applicant uses the surname Kepler as part of a
pseudonym for a series of books that has sold millions of copies. This is not an obscure
usage. Furthermore, with this level of consumer exposure, it cannot be presumed
that, whatever Applicant’s intentions, consumers who encounter the term KEPLER
will associate it with the past figure of Johannes Kepler, rather than with the present,
bestselling author, Lars Kepler. On this record, it is apparent that KEPLER would
be perceived as primarily merely a surname, with perhaps a few well-known
bearers.16
Applicant finally argues that there are live, third-party registrations with the
term “KEPLER” which have been allowed to register on the Principal Register
without a showing of acquired distinctiveness. These include KEPLER (Registration
No. 2,157,319) for computer software for creating fonts, and for users manuals;17
AMVILAB KEPLER (Registration No. 4,805,359) for dietary and nutritional
supplements;18 and KEPLER CHEUVREUX (Registration No. 4,611,886) for

15 Id.
16 While we note that Applicant has filed an intent to use application, nothing in this decision
is intended to preclude Applicant from seeking a registration based on acquired
distinctiveness, if and when appropriate.
17 Owned by Adobe Systems, Inc. Registered May 12, 1998. Renewed.
18 Owned by Amvilab, LLC (Georgia). Registered September 1, 2015.
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financial services.19 Besides being few in number, these registrations are unavailing
in our analysis. The USPTO must examine each application on its own merits based
on the record in the application under consideration and neither the USPTO’s
examining attorneys nor the Board are bound by the decisions of other examining
attorneys in other applications. See In re Cordua Restaurants, Inc., 823 F.3d 594, 118
USPQ2d 1632, 1635 (Fed. Cir. 2016) (“The PTO is required to examine all trademark
applications for compliance with each and every eligibility requirement . . . .”); In re
Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009)
(“Even if all of the third-party registrations should have been refused registration
. . . , such errors do not bind the USPTO to improperly register Applicant’s marks.”)
(citation omitted); In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to
Nett Designs’ application, the PTO’s allowance of such prior registrations does not
bind the Board or this court.”).
Rather, we find that the Examining Attorney has carried the Office’s burden of
showing that KEPLER would be perceived as primarily merely a surname, which
Applicant has not rebutted. There is sufficient evidence of record that Kepler is a
surname, including being the surname of a semi-historical figure, Johannes Kepler.
Although dictionaries define the term KEPLER as referring to Johannes Kepler, and
there are several things named for him, these are mainly in the field of astronomy.
There is no indication that consumers of Applicant’s identified goods would make an

19 Owned by Kepler Cheuvreux (France). Registered September 30, 2014. This is not a use-
based registration, but is based on a foreign registration.
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association with Johannes Kepler. This is particularly so, since Applicant itself writes
a bestselling series under the pen name Lars Kepler, which would instead lead
consumers to a different association with the Kepler name. Overall, the record shows
that consumers will perceive the term KEPLER to be primarily merely a surname.
Decision: The refusal to register Applicant’s mark is affirmed under Section 2(e)(4)
of the Trademark Act.