Broe Management Company, LLC d/b/a The Broe Group

Trademark Trial and Appeal Board

Aug 11, 2017

No. 86715987 (T.T.A.B. Aug. 11, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 11, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Broe Management Company, LLC d/b/a The Broe Group
_____

Serial No. 86715987
_____

Thomas S. Birney of Door, Carson & Birney, P.C.
for Broe Management Company, LLC d/b/a The Broe Group.

Steven W. Jackson, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney).
_____

Before Adlin, Masiello and Hightower, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Broe Management Company, LLC d/b/a The Broe Group (“Applicant”) seeks a
Principal Register registration for the mark shown below

for “investment services, namely, asset acquisition and management services;
financial asset disposition services, namely, business liquidation services.”1 The

1 Application Serial No. 86715987, filed August 5, 2015 based on an alleged intent to use the
mark in commerce under Section 1(b) of the Trademark Act, and later amended to allege first
use dates of August 2015. The application includes this description of the mark: “The mark
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application includes Applicant’s claim of acquired distinctiveness in part under
Section 2(f) of the Act as to the term “Broe.”
The Examining Attorney refused registration on the ground that Applicant’s mark
is “primarily merely a surname” under Section 2(e)(4) of the Act, specifically finding
that Applicant’s “adding a non-distinctive design element or letter stylization … does
not change the surname significance …” and that Applicant’s evidence of acquired
distinctiveness is insufficient. Office Action of December 30, 2016. After the refusal
became final Applicant appealed and Applicant and the Examining Attorney filed
briefs.
Is Applicant’s Mark Primarily Merely a Surname?
Marks which are “primarily merely a surname” may not be registered on the
Principal Register unless they have acquired distinctiveness. 15 U.S.C. § 1052(e) and
(f); In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir.
1985). “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.” Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1480
(TTAB 2017). This is a question of fact, on which the Office bears the burden of proof.
It can be resolved only on a case-by-case basis. Darty, 225 USPQ at 653; In re Eximus
Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016). Here, the record includes
evidence typical of many surname cases: whether anyone affiliated with Applicant is

consists of the word ‘Broe’ with the letters ‘B’, “r’ and ‘e’ in black stylized lettering and the
letter ‘o’ in green.”
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named BROE; whether the term has any non-surname meaning; and whether the
term is rarely used as a surname. See, e.g., Azeka Bldg., 122 USPQ2d at 1480-81; In
re Eximus Coffee, 120 USPQ2d at 1278.
The evidence establishes that Applicant is named for its founder and chief
executive officer Pat Broe:

Office Action of November 20, 2015. As in In re Integrated Embedded, 120 USPQ2d
1504, 1506 (TTAB 2016), “[t]his screenshot indicates that Applicant derived its name
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and ‘dba,’ [Broe Group], from Mr. [Broe],” which supports a finding that Broe will be
perceived as a surname. Elsewhere on its website, Applicant specifically refers to
itself as a “family-owned business”:

Office Action of February 18, 2016. This suggests, to any unsure of the term’s
meaning, that Broe could be the surname of the family that owns Broe Group. This
suggestion would of course be confirmed as accurate to anyone encountering
Applicant’s website’s reference(s) to Pat Broe. See Darty, 225 USPQ at 653 (finding
that DARTY is primarily merely a surname in part because it “is not only the
surname of the principal of the business, but also is used in the company name in a
manner which reveals its surname significance …”); In re Integrated Embedded, 120
USPQ2d at 1506-07.
Consumers are also likely to believe that Broe is a surname because the “negative”
dictionary evidence of record reveals that the term has no other, non-surname
meaning. Office Action of December 30, 2016.2 By contrast, the Wikipedia entry for
“Broe” specifically states that “Broe is a surname. Notable people with the surname
include: Carsten Broe football team manager [and] Georg Broe surrealist artist.”

2 https://www.ahdictionary.com/word/search.html?q=broe and https://en.oxforddictionaries.
com/search?utf8=%E2%9C%93&filter=noad&query=broe. We have not considered pages
which appear to be from a British dictionary.
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Office Action of November 20, 2015.3 Although the entry goes on to state “See also
Broe Township, Benson County, North Dakota,” we find this insufficient to overcome
the surname significance of “Broe,” as there is no evidence about the origin of the
township’s name or its size or renown. See In re Champion International Corp., 229
USPQ 550, 551 (TTAB 1985) (“we are of the opinion that such uses are either
somewhat obscure, or represent the normal naming of a place or building after an
individual (whether President McKinley or someone else). Accordingly, we do not
believe that these other meanings of the term ‘MCKINLEY’ are sufficient to take it
out of the ‘primarily merely a surname’ category”). See also In re Isabella Fiore, LLC,
75 USPQ2d 1564, 1567 (TTAB 2005) (“It would hardly be surprising that a surname
also identified streets, villas or towns and such minor geographic occurrences do not
demonstrate that the term is not primarily a surname. To be considered primarily
merely a surname, a term does not have to be devoid of any non-surname
significance.”); In re Hamilton Pharmaceuticals, Ltd., 27 USPQ2d 1939 (TTAB 1993).
Indeed, other than the completely unexplained, bare reference to a Broe
Township in North Dakota, all of the remaining evidence in the record establishes
the term’s surname significance. For example, the Examining Attorney introduced
the following evidence of people who share the surname Broe with Applicant’s
founder:
USA Track & Field’s website indicates that Tim Broe, a
middle distance runner, competed in the 2004 Olympics
and is a 3-time USA Outdoor 5,000 meter champion.

3 https://en.wikipedia.org/wiki/Broe.
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Ohio State University’s website indicates that Michael
Broe is a Post Doctoral Researcher and Visiting Scholar in
the Department of Evolution, Ecology and Organismal
Biology.

Bryant University Athletic’s website reveals that Charlie
Broe is a distance freestyler on the Men’s Swim & Dive
team who set two school records as a freshman.

The Charleston City Paper’s article entitled “Former
DanceFx director Jenny Broe opens a new studio,
DanceLab Charleston” indicates that Ms. Broe will perform
at Charleston Fashion Week and the Charleston Heart
Ball.

According to its website, the Four Seasons Orchestra’s
conductor is Dr. Carolyn Waters Broe, who has been the
featured solo violist and conductor in California and
Arizona orchestras. She has won several awards and
toured with the American Festival Orchestra.

Office Action of December 30, 2016 (printouts from “usatf.org,” “osu.edu,”
“bryantbulldogs.com,” “charlestoncitypaper.com” and “fourseasonsorchestra.org”). In
addition, the Examining Attorney introduced evidence that approximately 1,250
Americans have the surname Broe. Office Action of November 20, 2015 (printout from
“namestatistics.com”).
While the evidence makes clear that Broe is a rare surname, that does not mean
it is not primarily merely a surname. In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551
(TTAB 2017) (“Even a rare surname may be held primarily merely a surname if its
primary significance to purchasers is that of a surname.”); In re Eximus Coffee, 120
USPQ2d at 1281 (“Section 2(e)(4) makes no distinction between rare and
commonplace surnames … and even a rare surname is unregistrable if its primary
significance to purchasers is a surname.”) (numerous citations omitted). Where, as
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here, a surname is rare but has no other meaning, and is the name of someone
affiliated with an applicant (in this case its founder and CEO who is prominently
featured on the company’s website), it may be found to be primarily merely a
surname.
We agree that the circumstances and record of this case
establish that the primary significance of ALDECOA is as
a surname. As in Darty, we accord particular weight to
Applicant’s association of the goods with the family name
ALDECOA, both on the website showing the founder’s and
current owner’s surname is ALDECOA and the packaging
that refers to “A Family Coffee” directly under the surname
ALDECOA. As to the other relevant circumstances
presented by the Examining Attorney and Applicant, there
is no persuasive evidence in the record that ALDECOA
would be perceived as anything other than a surname in
the United States. Moreover, there is no evidence in the
record to give the structure and pronunciation of
ALDECOA any weight in the determination. And even
though it is a relatively rare surname, with minimal
additional public exposure in the media, this is outweighed
by Applicant’s use as a surname in connection with its
goods. On balance, we find that ALDECOA is primarily
merely a surname.

In re Eximus Coffee, 120 USPQ2d at 1283. As there, so here. Cf. In re Benthin
Management GmbH, 37 USPQ2d 1332 (TTAB 1995) (stating that were it not for its
“highly stylized” form, “we would find that the service mark BENTHIN … would be
perceived as primarily merely a surname,” based on highly similar evidence to that
presented here and in Eximus Coffee).
While Applicant’s mark in this case is presented in a stylized format, it is not
nearly so “highly stylized” as the mark in Benthin:

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the letters of which “also function as a design element.” In re Benthin Management,
37 USPQ2d at 1334. Applicant’s mark, by contrast, is merely displayed in a certain
font of no particular note with one of its letters being green. The display of BENTHIN,
on the other hand, features a much more distinctive font, letters of different sizes
presented atypically and an oval design. Applicant’s mark in this case is also less
distinctive than the mark in In re Picket Hotel Company, 229 USPQ 760 (TTAB 1986):

the stylization of which was nevertheless found to be “insignificant, in that it is
clearly not so distinctive as to create any separate commercial impression in the
minds of purchasers of appellant’s services.” Id. at 763. Applicant’s display of the
letters “r,” “o” and “e” in lower case does not have “such an impact on the commercial
impression created by the mark as to alter its primary significance to the purchasing
public from that of a surname to that of a service mark.” In re Directional Marketing
Corp., 204 USPQ 675, 677 (TTAB 1979). In fact, surnames are typically displayed
with their first letter capitalized and the remaining letters in lowercase, the same
way Applicant displays its name and its founder’s name on its website.
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That leaves only a nondistinctive font and a green “o,” neither of which alters the
primary significance of BROE given the other evidence in the record. Neither the font
nor the green letter alter the mark’s commercial impression in any way. For example,
in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millenium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1133 (Fed. Cir. 2015), the Federal
Circuit affirmed our finding that
and
create “the same continuing commercial impression” despite the obvious differences
between the fonts and paw designs. See also Paris Glove of Canada Ltd. v.
SBC/Sporto Corp., 84 USPQ2d 1856, 185 (TTAB 2007) (“there is no material
alteration between the original, registered AQUA STOP rectangular form of the mark
which shows the words depicted on two lines, and the semicircular and linear forms
which depict the words on one line … the particular stylizations of the semicircular
and linear forms simply do not change the essential nature of the rectangular form
mark”); S&L Acquisition Co. v. Helene Arpels, Inc., 9 USPQ2d 1221, 1226 (TTAB
1987) (“there can be no doubt that ‘ADRIEN ARPEL’ whether represented in block
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form or stylized lettering is the single dominant commercial impression of both marks
engendering the same and continuing commercial impression”).
In short, the record leaves no doubt that when the purchasing public considers
in relation to Applicant’s investment and financial asset disposition services,
it will primarily signify a surname, specifically that of Pat Broe whose family owns
Broe Management Company d/b/a The Broe Group.
Has the “Broe” Surname Acquired Distinctiveness?
The essential disagreement between Applicant and the Examining Attorney
revolves around Applicant’s short-term use of the stylized form of its BROE mark.
Specifically, in response to the original refusal to register, Applicant submitted a
claim of acquired distinctiveness which was rejected because at the time the
application was based on an intent to use rather than actual use, and Applicant failed
to submit any evidence meeting the requirements for establishing that a mark in an
intent to use application has acquired distinctiveness. Office Action response of
November 24, 2015 and Office Action of December 16, 2015.4 In response, Applicant
filed its Amendment to Allege Use, thus making the requirements for proving the
acquired distinctiveness of marks in intent to use applications irrelevant.
The next day, Applicant requested reconsideration of its claim of acquired
distinctiveness based on the amendment, but the Examining Attorney was unmoved,

4 The Examining Attorney summarized these requirements in the Office Action, citing: In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In
re Nielsen Bus. Media, Inc., 93 USPQ2d 1545, 1547 (TTAB 2010); In re Binion, 93 USPQ2d
1531, 1538 (TTAB 2009); Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71; In re
Rogers, 53 USPQ2d 1741, 1744-45; and TMEP § 1212.09(a).
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because the involved mark has only been in use since August 2015, which is
significantly less than the five years normally found sufficient to establish that
surnames have acquired distinctiveness. Office Action response of February 19, 2016
and Office Action of April 13, 2016.
Applicant then clarified “that its Section 2(f) claim is in part with regard to the
word ‘Broe.’” That is, Applicant claims use of the word BROE in block letters or
without regard to font or stylization for more than five (in fact more than 40) years.
To support this claim of acquired distinctiveness, Applicant submitted a declaration
from Mark Richter, its Vice President (“Richter Dec.”). Office Action response of June
14, 2016. According to Mr. Richter
Applicant and its affiliates have continuously used the
BROE mark in commerce in association with the applied-
for services, and related goods and services for over forty
(40) years … The BROE mark has become distinctive
through the Applicant’s substantially exclusive and
continuous use in commerce in association with the
applied-for services for at least five years immediately
before the date of this application.

Richter Dec. ¶¶ 1-2.
While Mr. Richter also provided additional testimony supporting Applicant’s
claim of acquired distinctiveness, this is typically not required when the mark at issue
is a surname. Rather, “the USPTO has a longstanding practice of allowing
registration of surnames under Section 2(f) upon a showing of substantially exclusive
and continuous use of the name as a mark in regulable commerce for five years and
of the applicant’s belief that such use has caused the mark to become distinctive of
its goods.” In re Adlon Brand GmbH & Co., KG, 120 USPQ2d 1717, 1722 n.33 (TTAB
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2016); In re Lorillard Licensing Co., LLC, 99 USPQ2d 1312, 1316 (TTAB 2011) (“the
burden to prove that this combination is viewed as a trademark for cigarettes is
necessarily greater than if this were, for example, a surname (for which a statement
of substantially exclusive and continuous use for five years is normally sufficient).”);
In re Molson Indus. Ltd., 192 USPQ 402, 404 (TTAB 1976) (“applicant’s allegation of
distinctiveness based upon five or more years of substantially exclusive use in
commerce has been historically prima facie sufficient to establish distinctiveness in
a surname”).
There is no reason not to follow this standard practice here. While Applicant
claims more than five years use of the “Broe mark” or the “word Broe,” that is
sufficient to establish that the involved stylized mark has acquired distinctiveness.
Indeed, we have already found that the font and color in the applied-for mark is not
significant and that the commercial impression created by the involved mark is
simply the surname BROE, which Applicant has been using for well over five years.
The fact that Applicant now seeks registration of BROE in a particular font with a
green “o” does not change the fact that the essence of the applied-for mark, BROE,
has been in use for more than five years. Because the mark creates the
same continuing commercial impression as BROE in block letters, Applicant’s use of
BROE in block letters for more than five years is sufficient to establish that
has acquired distinctiveness.
Indeed, if Applicant had sought registration of BROE in standard characters, Mr.
Richter’s declaration likely would have been sufficient by itself to establish acquired
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distinctiveness and Applicant’s right to a Principal Register registration. It would be
perverse to find here that merely because Applicant sought registration of a more
specific, minimally-stylized form of BROE, rather than BROE in standard characters,
it is not entitled to registration.
… we cannot find that the display of applicant’s mark is
uncommon, noteworthy, or extraordinary. Applicant’s
mark, like many marks, contains a design, but the Office
encourages applicants to submit drawings that depict their
marks in standard character form. See TMEP § 807.04(b).
Here, inasmuch as the term SPECTRAMET creates a
distinct commercial impression apart from any stylization
or design element … we reverse the examining attorney’s
refusals to register on the ground that the [standard
character] mark in the drawing is not a substantially exact
representation of the mark as displayed on the specimens
in these cases.

In re wTe Corp., 87 USPQ2d 1536, 1540 (TTAB 2008). See also In re Viterra Inc., 671
F.3d 1358, 101, USPQ2d 1905, 1909 (Fed. Cir. 2012) (“to the extent the Board simply
held that a standard character mark is not limited to any particular font, size, style
or color, it is entirely consistent with our case law, the relevant regulations, and the
TMEP”); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1258-59 (Fed. Cir. 2011); In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399
(TTAB 2012) (“applicant’s existing registration of ANYWEARS in standard character
form means that the mark can be depicted in the identical font style and size in which
applicant’s applied-for mark is shown (or, for that matter, in the identical manner in
which the ANYWEAR portion of registrant’s mark is depicted). Accordingly, there is
no meaningful difference between the standard character and stylized versions of
applicant’s marks”).
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Conclusion
Because the record leaves no doubt that BROE is primarily merely a surname,
and does not create any separate commercial impression from BROE in
block letters, the Examining Attorney’s finding that is primarily merely a
surname is affirmed. However, because Applicant has used BROE in block letter form
for more than five years, it has established that has acquired
distinctiveness and is entitled to registration on the Principal Register.

Decision: The refusal to register Applicant’s mark under Section 2(e)(4) of the Act is
reversed, because the mark has acquired distinctiveness under Section 2(f) of the Act.

Masiello, Administrative Trademark Judge, concurring in the result:
I have no quarrel with the majority’s conclusion that BROE is a surname. However,
I find the analysis unnecessary, because I believe the stylized form of the mark is
sufficient to render the mark not merely a surname. I also have no quarrel with
allowing Applicant to enter its claim of acquired distinctiveness in part as to the
literal portion of the mark.