C. Josef Lamy GmbHDownload PDFTrademark Trial and Appeal BoardApr 9, 2019EX (T.T.A.B. Apr. 9, 2019) Copy Citation Mailed: April 9, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re C. Josef Lamy GmbH _____ Serial No. 79201309 _____ Laurence P. Colton of Smith Tempel Blaha LLC for C. Josef Lamy GmbH. Deborah Lobo, Trademark Examining Attorney, Law Office 109, Michael Kazazian, Managing Attorney. _____ Before Kuhlke, Shaw and Adlin, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant C. Josef Lamy GmbH requests an extension of protection of International Registration No. 1330469 for the proposed mark LAMYSHOP, in standard characters, for: Paper and cardboard; works of art made of paper and cardboard; figurines made of paper and cardboard; paper party decorations; art materials and media, namely, art paper, drawing pens and pencils; bags and articles for packaging, wrapping and storage made of paper, cardboard or plastics, namely, plastic or paper bags for household use; stationery; printed instructional and teaching material in the field of art; adhesives for stationery or household purposes; printed matter, namely, journals in the field of general interest; writing instruments; fountain pens; ball pens; pencils; crayons; wax crayons; retractable pencils; rollerball pens; fibertip pens; ink and ink cartridges for This Opinion is Not a Precedent of the TTAB Serial No. 79201309 2 writing instruments; leads for writing instruments; rubber erasers; pencil sharpeners; cases for stationery in International Class 16; and Wholesale and retail store services, online wholesale and retail store services, and telephone ordering services, all in the field of toiletries, cleaning and fragrancing preparations, statues, figurines, signs, works of art, utensils for body care and beauty care for human beings and animals, protective helmets, pocket torches, electric, bicycles and bicycle parts, food preparation implements, kitchen knives, table cutlery, information technology and audiovisual equipment, instructional apparatus and instruments, precious stones, pearls and precious metals and imitations thereof, jewels, jewellery, horological instruments, clocks, wristwatches, wall clocks, alarm clocks, cases for clocks, key rings trinkets or fobs, key chains, jewellery cases, containers for watches, musical instruments, musical accessories, paper and cardboard, decoration and art materials, stationery, instructional and teaching material, adhesives for stationery or household purposes, banknote holders, disposable paper products, printed matter, writing instruments, fountain pens, ball pens, pencils, crayons, wax crayons, retractable pencils, rollerball pens, fibertip pens, ink and ink cartridges for writing instruments, leads for writing instruments, rubber erasers, pencil sharpeners, cases for stationery, umbrellas and parasols, walking sticks, luggage, bags, satchels and other carriers, suitcases, purses, key cases, rucksacks, leather and imitations of leather, furs and animal skins, saddlery, whips and animal apparel, cases for musical instruments, furniture and furnishings, animal housing and beds, brushes, paint brushes and brooms, tableware, cooking pot sets and containers, glassware, porcelain ware, cleaning articles, cosmetic utensils and toiletry utensils, bathroom articles, textile material, textile articles, bed blankets, table cloths, headgear, clothing, footwear, accessories for apparel, sewing articles and decorative textile articles, decorative articles for the hair, hair fasteners, floor coverings, wall coverings and ceiling coverings, sporting articles and sports equipment, festive Serial No. 79201309 3 decorations, toys, games, playthings and curiosities, smokers' articles in International Class 35.1 The Examining Attorney refused registration on the ground that the proposed mark is “primarily merely a surname” under Section 2(e)(4) of the Trademark Act. After the refusal became final Applicant appealed and Applicant and the Examining Attorney filed briefs. I. The Record The Examining Attorney relies on a Wikipedia entry which indicates that Lamy “is a producer of writing instruments in Europe,” i.e. Applicant, which was founded by Josef Lamy in 1930, and then taken over by his son Manfred Lamy until Manfred’s retirement in 2006. May 28, 2018 Office Action TSDR 6. The Examining Attorney also relies on a printout of the translated “Company History” page on Applicant’s “lamy.com” website. It too indicates that Applicant was founded in 1930 by Josef Lamy, and started as a “small Heidelberg writing implement factory,” eventually becoming “the market leader and brand manufacturer of international significance.” September 30, 2017 Office Action TSDR 23-24. The English translation of Applicant’s website reveals that Applicant bills itself as “an independent family company”: 1 Application Serial No. 79201309, filed September 7, 2016, under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), based on International Registration No. 1330469. Serial No. 79201309 4 Id. TSDR 40. The Examining Attorney supplemented this material with “negative” dictionary evidence showing that the term “lamy” has no non-surname meaning. March 6, 2017 Office Action, TSDR 25; May 28, 2018 Office Action TSDR 15-16. In addition, the Examining Attorney provided a search of “switchboard.com” showing 2,854 “matches for [the surname] Lamy,” in the United States and Canada, but the number of matches for people named LAMY who reside in the United States is not provided. Id. TSDR 8-22. A separate LexisNexis public records search apparently covering just the United States revealed 1,565 people with the surname LAMY. September 30, 2017 Office Action TSDR 10-28. It appears from these search results that at least some of the listings may be duplicates. According to a “pbs.org” website, LAMY was the 18,607th “most popular” last name in the United States in 1990, and the 18,933th “most popular” in 2000. January 7, 2018 Office Action TSDR 11. These submissions reveal that while LAMY is a surname, it is not very common. In attempting to establish that LAMY has the “structure and pronunciation” of a surname, the Examining Attorney also introduced public records searches showing Serial No. 79201309 5 that a relatively small number of United States residents have the surnames “Lame,” “Lamey,” “Lami,” “Lamie” or “Leamy.” May 28, 2018 Office Action TSDR 10-14. The Examining Attorney submitted excerpts from 19 United States newspaper articles which refer to people who have the surname LAMY. January 7, 2018 Office Action TSDR 5-10. While some of the articles are from publications based in major cities such as Boston and Miami, and others were published by the Associated Press, many of the excerpted publications appear to be from smaller cities such as Manchester, New Hampshire and Eldorado Hills, California. No circulation figures for any of the publications are of record. The following references to people named LAMY are typical of the excerpted articles: “Meredith Lamy took an imaginary trip to Myrtle Beach … Lamy’s Award of Excellence came with a $1,000 prize.” Kim Underwood, “Revealing Life Through Art Young Artist Turns a Challenge Into an Opportunity to Excel,” Winston-Salem Journal Nov. 23, 2003. “… after the headless and handless corpse was identified as James J. Lamy, 36 ….” “Headless, Handless Body Identified as that of Converse Man,” San Antonio Express- News, Oct. 29, 2008. “It is Sunday morning and the Rev. Roland Lamy is saying Mass for a gathering of Haitian refugees ….” Marjorie Valbrun, “Father Figure Lauderdale Priest Helps Haitian Refugees Keep Faith in God, Future, Themselves,” Miami Herald, Nov. 4, 1990. Id. While most of the Lamys mentioned in the articles appear to not be well known, as in the examples cited above, some of the articles refer to Pascal Lamy, a Frenchman then in charge of the World Trade Organization. When considered in combination, these articles appear to indicate that Pascal Lamy achieved some Serial No. 79201309 6 renown as the head of that organization. Another article is about Michele Lamy, a Frenchwoman who the article indicates was (at least at the time) well known somewhere, although because only an excerpt was provided, it is not clear where she was said to be well known; nevertheless, because the article was published in the United States, we infer that Michele Lamy has some level of renown here. Id. (Gaile Robinson, “Michele Lamy Somehow Knits It All Together,” Los Angeles Times, May 16, 1990). Finally, the Examining Attorney introduced the following dictionary definitions of the term “shop” (as well as additional, highly similar definitions of the term): SHOP─“a store or the work area of a person in a trade.” SHOP─“a place where certain goods or services are offered for sale; esp., a small store.” March 6, 2017 Office Action TSDR 27-30 (printout from “yourdictionary.com”). She similarly relies on 10 third-party registrations for marks which contain the term SHOP. Each is either registered with a disclaimer of the term SHOP (with the disclaimers typically including the term which precedes SHOP, such as SMOKE SHOP, PET SHOP, CHALKBOARD SHOP, etc.), registered on the Supplemental Register, or registered on the Principal Register with a claim of acquired distinctiveness covering the term SHOP under Section 2(f) of the Act. January 7, 2018 Office Action TSDR 13-39. Applicant did not introduce any evidence other than printouts of its “live” U.S. Principal Register registrations for the mark LAMY (U.S. Reg. Nos. 4333243, issued May 14, 2013, and 4582305, issued August 12, 2014). December 14, 2017 Request for Serial No. 79201309 7 Reconsideration TSDR 17-25. Neither registration includes a Section 2(f) claim or a disclaimer. Both of these registrations identify many of the same goods identified in both Class 16 and Class 35 of Applicant’s involved application. However, both registrations issued under Section 66(a) of the Act, and neither indicates that Applicant has used its LAMY mark in the United States. II. Analysis 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 named LAMY; whether the term has any non-surname meaning; whether the term is rarely used as a surname; and the extent to which United States consumers have been exposed to the term. See, e.g., Azeka Bldg., 122 USPQ2d at 1480-81; In re Eximus Coffee, 120 USPQ2d at 1278. There is no dispute that Josef Lamy founded Applicant, that the involved application’s owner is C. Josef Lamy GmbH or that the company was taken over by Mr. Lamy’s son, with the same surname, who remained with the company until 2006. Serial No. 79201309 8 Applicant refers to itself on its website as a “family company.” Here, as in In re Integrated Embedded, 120 USPQ2d 1504, 1506 (TTAB 2016), this evidence supports a finding that Lamy will be perceived as a surname. See also 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 Weiss Watch Co., Inc., 123 USPQ2d 1200, 1203 (TTAB 2017) (“Applicant’s promotion of its founder’s connection to the company and its goods is persuasive of consumer perception of WEISS as a surname.”). Consumers are also likely to believe that Lamy is a surname because the “negative” dictionary evidence of record reveals that the term has no other, non- surname meaning. By contrast, the Wikipedia entry for “Lamy” specifically states that the term refers to Applicant, which was founded by Josef Lamy and later run by his son Manfred Lamy. In re Eximus Coffee, 120 USPQ2d at 1280 (“The evidence that ALDECOA has no other recognized meaning further supports the Examining Attorney’s case that its primary significance is as a surname.”). We do not agree, however, that LAMY has the “structure and pronunciation” of a surname. In re Adlon Brand GmbH & Co., KG, 120 USPQ2d 1717, 1724 (TTAB 2016) (“[T]he surnames cited are not highly similar in structure to ADLON. The mere sharing of a prefix, suffix or letter string does not result in the sort of structural similarity that is helpful to our analysis. Moreover, evidence showing that the surnames cited are similar in sound is lacking.”). Serial No. 79201309 9 While the evidence makes clear that Lamy is rarely used as a 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). In fact, where, as here, a surname is rare but has no other meaning, and is the name of someone affiliated with an applicant (in this case Applicant’s founder and his son, both of whom ran the company), it is often found to be primarily merely a surname. Moreover, we have affirmed refusals of surnames which are rarer than Applicant’s surname LAMY. In re Adlon,120 USPQ2d at 1720-21 (finding ADLON merely a surname despite evidence that only 75 United States individuals have that name, and pointing out that the “strictly numerical approach to a surname analysis has been squarely rejected”). For all of these reasons we find that LAMY is “primarily merely a surname.” We further find that Applicant’s entire mark, LAMYSHOP, is “primarily merely a surname.” The evidence establishes that if SHOP is not generic for Applicant’s “wholesale and retail store services” in Class 35 and its Class 16 goods, which are sold in those stores, it is at best merely descriptive. Indeed, SHOP merely indicates that Applicant’s goods are sold through a “shop” or store, and that Applicant’s retail store services are provided through a “shop.” The term SHOP thus does not alter the Serial No. 79201309 10 surname significance of LAMY because LAMY has no meaning other than as a surname. In re Weiss Watch Co., 123 USPQ2d at 1207 (“There can be no dispute that when used in connection with watches, the additional words WATCH COMPANY are incapable of source-identifying function and, viewing the mark as a whole in the context of the identified goods, do not alter the primary significance of the proposed mark WEISS WATCH COMPANY as primarily merely a surname.”); Azeka Bldg., 122 USPQ2d at 1477 (finding AZEKA’S RIBS primarily merely a surname for barbeque sauce); In re Cazes, 21 USPQ2d 1796 (TTAB 1992) (finding BRASSERIE LIPP primarily merely a surname for restaurant services, stating that “[t]he addition of this generic term [BRASSERIE] to LIPP does not alter the primary significance of the mark as a surname”); In re Woolley’s Petite Suites, 18 USPQ2d 1810, 1812 (TTAB 1991) (“Adding PETITE SUITES to the surname WOOLLEY’S does not create a mark which is anything other than primarily merely a surname.”). Cf. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411 (Fed. Cir. 2017) (vacating decision that EARNHARDT COLLECTION is not primarily merely a surname for furniture and custom construction of homes due to failure to consider whether COLLECTION is descriptive or generic such that it fails to alter the surname significance of EARNHARDT), remand to 2018 WL 6653027 (TTAB 2018) (on remand, finding term to be primarily merely a surname). Applicant’s website makes clear that SHOP is used as a separate word to describe Applicant’s store: Serial No. 79201309 11 September 30, 2017 Office Action TSDR 38. Finally, Applicant’s ownership of Principal Register registrations for LAMY is not sufficient to overcome the evidence that LAMY is primarily merely a surname, because those registrations are not based on use in commerce, and there is no evidence of record that LAMY has acquired distinctiveness in the United States. In re Adlon, 120 USPQ2d at 1722 (rejecting purported Section 2(f) claim because of lack of evidence of use in United States commerce); cf. Darty, 225 USPQ at 654 (“Nor can we accept appellant’s further argument that, because the application is based on foreign priority, proof of distinctiveness cannot be required. Section 44(d)(2) merely excuses certain foreign applicants from alleging use in commerce to secure a registration under the statute. The section does not require that registration be afforded on the Principal Register, as opposed to the Supplemental Register, in the absence of a showing of secondary meaning acquired by use in this country.”); TMEP § 1212.08 (Oct. 2018) (“The same standards for establishing acquired distinctiveness apply whether the application is based on § 1(a), § 44 or § 66(a) … The applicant may not rely on use other than use in commerce that may be regulated by the U.S. Serial No. 79201309 12 Congress in establishing acquired distinctiveness. Evidence of use solely in a foreign country, or between two foreign countries, is not evidence of acquired distinctiveness in the United States.”). In any event Applicant has not asserted a Section 2(f) claim, even though the March 6, 2017 Office Action specifically suggested that Applicant could obtain a Principal Register registration by establishing that LAMYSHOP has acquired distinctiveness under Section 2(f). See In re Cazes, 21 USPQ2d at 1797 and n. 7 (rejecting argument that BRASSERIE LIPP is no longer primarily merely a surname and instead is perceived as a mark, stating: “The difficulty with this argument is that the applicant has not claimed the benefits of Section 2(f) of the Act and, without a formal claim of distinctiveness under this section, evidence of fame cannot serve as the basis for allowing registration of applicant’s mark” and “it is difficult to see how such a claim could be made, since … applicant’s application is based, not on use in commerce, but on a French registration.”). III. Conclusion The record leaves no doubt that LAMYSHOP is primarily merely a surname, because: LAMY is Applicant’s name, the name of its founder, and Applicant promotes itself as a family company; LAMY has no non-surname meaning; and the addition of the merely descriptive or generic term SHOP to the proposed mark does not alter its surname significance for Applicant’s retail store services or Applicant’s goods. Decision: The refusal to register Applicant’s mark under Section 2(e)(4) of the Act is affirmed. Copy with citationCopy as parenthetical citation