Chalmers Pyjamas Pty Ltd.

Trademark Trial and Appeal Board

Sep 7, 2018

No. 79206511 (T.T.A.B. Sep. 7, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: September 7, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Chalmers Pyjamas Pty Ltd.
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Serial No. 79206511
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Madelon Lapidus and Larry H. Tronco and of Holland & Hart LLP
for Chalmers Pyjamas Pty Ltd.
Patty Evanko, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
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Before Kuhlke, Ritchie and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Chalmers Pyjamas Pty Ltd. (“Applicant”) seeks registration on the Principal
Register of the mark for
Clothes, namely, shirts, t-shirts, pants, jumpers,
cardigans, bathrobes, nightgowns, boxer shorts, sleepwear,
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pyjamas, dressing gowns, underwear, lingerie and socks in
International Class 25;1 and
Retail store and wholesale store services featuring
clothing, footwear, headgear, sleepwear, pyjamas, dressing
gowns, underwear, lingerie, sleep masks, socks, slippers,
gloves, mittens, scarves, textiles and textile goods, linen,
bedlinen, bed covers, blankets, pillowcases, sheets, towels,
table covers, candles, soaps, body wash, body lotions, hand
creams, leather and imitations of leather and goods made
from those materials, bags, plush toys; online store and
wholesale services featuring clothing, footwear, headgear,
sleepwear, pyjamas, dressing gowns, underwear, lingerie,
sleep masks, socks, slippers, gloves, mittens, scarves,
textiles and textile goods, linen, bedlinen, bed covers,
blankets, pillowcases, sheets, towels, table covers, candles,
soaps, body wash, body lotions, hand creams, leather and
imitations of leather and goods made from those materials,
bags, plush toys; the bringing together for the benefit of
others of a variety of goods, enabling customers to
conveniently view and purchase those goods in a retail
store specializing in clothing, footwear, headgear,
sleepwear, pyjamas, dressing gowns, sleep masks,
underwear, lingerie, socks, slippers, gloves, mittens,
scarves, textiles and textile goods, linen, bedlinen, bed
covers, blankets, pillowcases, sheets, towels, table covers,
candles, soaps, body wash, body lotions, hand creams,
leather and imitations of leather and goods made from
those materials, bags, plush toys; mail order catalog and
retail ordering services accessible by telephone featuring
the bringing together for the benefit of others of a variety
of goods, enabling customers to conveniently view and
purchase those goods in a retail store specializing in
clothing, footwear, headgear, sleepwear, pyjamas, dressing
gowns, sleep masks, underwear, lingerie, socks, slippers,
gloves, mittens, scarves, textiles and textile goods, linen,
bedlinen, bed covers, blankets, pillowcases, sheets, towels,
table covers, candles, soaps, body wash, body lotions, hand
creams, leather and imitations of leather and goods made

1 Application Serial No. 79206511 filed on December 22, 2016, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a), on the basis of International Registration No. 1342426,
issued December 22, 2016.

Serial No. 79206511
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from those materials, bags, plush toys in International
Class 35.
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. In addition, the
Examining Attorney has made final a requirement for an acceptable amendment of
the identification of services.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register and the
identification requirement.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
Applicant attached exhibits to its brief as evidence and has made reference to them.
These exhibits were not previously made of record by Applicant during prosecution
of its application. The Examining Attorney has objected to the new evidence as
outside the record and untimely.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides that the record in an
application should be complete prior to the appeal. Exhibits attached to a brief and
not made of record during examination are untimely, and generally will not be
considered. In re Jimmy Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016). See
TBMP §§ 1203.02(e), 1207.01 (2018). The exhibits attached to the brief are untimely
and we have not considered them.
Serial No. 79206511
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II. 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). The primary
significance of a mark to the purchasing public when viewed in relation to the goods
or services for which registration is sought determines whether it is primarily merely
a surname. Earnhardt v. Kerry Earnhardt, Inc., 846 F.3d 1374, 123 USPQ2d 1411,
1413 (Fed. Cir. 2017); In re Hutchinson Technology, Inc., 852 F.2d 552, 7 USPQ2d
1490, 1492 (Fed. Cir. 1988); Miller v. Miller, 105 USPQ2d 1615, 1619 (TTAB 2013).
To determine whether the purchasing public would perceive Applicant’s mark as
primarily merely a surname, we look to several factors including: (1) whether anyone
connected with Applicant has this surname; (2) whether the term has a non-surname
“ordinary language” meaning; and (3) the extent to which the term is used by others
as a surname, i.e., the degree of a surname’s rareness. In re Etablissements Darty et
Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985). In addition to the list of
examples of inquiries or “factors” articulated in Darty, the Board articulated two
additional examples of inquiry in In re Benthin Mgmt. GmbH, 37 USPQ2d 1332,
1333-34 (TTAB 1995): (4) whether the term has the “structure and pronunciation” of
a surname; and (5) whether the stylization of lettering is distinctive enough to cause
the mark not to be perceived as primarily merely a surname. These “factors” are not
exclusive and any of these circumstances —singly or in combination— and any other
relevant circumstances, may shape the analysis in a particular case. In re Eximius
Serial No. 79206511
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Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016); see also In re Integrated
Embedded, 120 USPQ2d 1504, 1506 n.4 (TTAB 2016).
A. Whether and to What Extent CHALMERS Is Encountered As a
Surname
During prosecution, the Examining Attorney submitted the first 100 results from
a search of the surname Chalmers, which also showed that CHALMERS appears
11,513 times in the LEXISNEXIS surname database.2 May 8, 2017 Office Action at
1. Applicant, in its brief, has made no argument addressing this evidence.
As demonstrated by the database evidence, CHALMERS is used as a surname
across the United States, and because it has received a good deal of exposure to the
general public, members of the general public are likely to encounter CHALMERS as
a surname.
B. Whether CHALMERS is the Surname of Anyone Connected with
Applicant
In the May 8, 2017 Office Action, the Examining Attorney supported her
statement that “it appears that Nichols Chalmers is someone connected with the
applicant who uses Chalmers as a surname,” with a news story from the Courier-Mail
newspaper obtained from the Internet.3 This article states “Gold Coast surfer

2 According to the Examining Attorney, this database is “a weekly updated directory of cell
phone and other phone numbers (such as voice over IP) from various data providers.” May 8,
2017 Office Action at 1.
3 The Examining Attorney failed to properly submit this webpage Internet evidence into the
record as it did not contain a URL containing the website address and date accessed.
However, because Applicant did not object to the website evidence, we deem the objection
waived. In re Mueller Sports Medicine, Inc., 126 USPQ2d 1584, 1587 (TTAB 2018).
Serial No. 79206511
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Nicholas Chalmers ditched the beach for the bedroom with his up-market sleepwear
range, Chalmers Pyjamas.” May 8, 2017 Office Action at 3.4 In her brief, the
Examining Attorney explains that this article was obtained from Applicant’s website
and argues that Nicholas Chalmers is “a person associated with Applicant.” 8
TTABVUE 4.
Applicant does not dispute the Examining Attorney’s statement and has made no
argument as to this factor in its brief. Although we do not know the exact relationship
of Nicholas Chalmers to Chalmers Pyjamas, Pty. Ltd., we find that Chalmers is the
surname of a person connected with Applicant.
C. Whether CHALMERS Has Any Recognized Meaning Other Than as a
Surname
To show that Chalmers has no recognized ordinary language meaning or
significance, the Examining Attorney submitted a page from the online version of the
Merriam-Webster dictionary.5 This dictionary page identifies “Chalmers” as a
biographical name, in particular, the name of a Scottish biographer and editor
Alexander Chalmers. May 8, 2017 Office Action at 2. This “negative” dictionary
evidence (i.e., listings showing nothing except surname/biographical meanings)
supports a finding that the primary significance of CHALMERS is as a surname.6

4 As stated in n.3, we deem any objection to the lack of URL and date accessed waived.
5 The Examining Attorney failed to include the URL and date accessed with this Internet
evidence. As stated in n.3, we deem any objection to the lack of URL and date accessed
waived.
6 Applicant has not argued that CHALMERS references a historical name, and there is no
evidence showing present day recognition by the public of Alexander Chalmers. In re Pyro-
Spectaculars Inc., 63 USPQ2d 2022, 2024 (TTAB 2002) (in connection with a surname
refusal, evidence showing the present day recognition and continuing fame of John Philip
Serial No. 79206511
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See, e.g., In re Eximius Coffee LLC, 120 USPQ2d at 1280 (citing In re Isabella Fiore
LLC, 75 USPQ2d 1564, 1566 (TTAB 2005)). See also Darty, 225 USPQ at 653-654.
Applicant argues that Chalmers is not primarily merely a surname because it has
other recognized meanings. Applicant asserts that CHALMERS is a given name and
“it cannot be predicted whether the perception of the consuming public would be as a
surname or a given name.” 6 TTABVUE 2-5. Applicant also argues that CHALMERS
has geographic significance. Id.
The evidence that Applicant largely relies on to support these arguments was
untimely submitted on appeal, and thus, as we stated previously, we do not consider
it. Counsel’s arguments are not evidence, and we will not rely on them. See Zheng
Cai v. Diamond Hong, Inc., ___ F.3d ___, ___ USPQ2d ___ (Fed. Cir. 2018) (quoting
Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)) (“Attorney
argument is no substitute for evidence”). The only evidence in the record showing
that CHALMERS is a given name is evidence submitted by Applicant in its February
2, 2018 Response to Office Action at 4-5. However, this evidence shows CHALMERS
as a given name in Scotland, not the United States.7 “It is the surname significance
of the term to consumers in the United States which is determinative of the
registrability issue.” In re BDH Two Inc., 26 USPQ2d 1556, 1558 (TTAB 1993). Thus,
this evidence is not probative of public perception in the United States of CHALMERS

Sousa, a historical figure, much more meaningful for purposes of determining the primary
significance of the term SOUSA today).
7 Applicant, like the Examining Attorney, failed to submit evidence that contained a URL
and date accessed. However, because the Examining Attorney did not object to the website
evidence, we deem the objection waived. See n.3.
Serial No. 79206511
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as a given name. Cf., In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445,
1450 (Fed. Cir. 2015) (Newbridge Ireland, a town of less than 20,000 people, found
not generally known in the United States; the fact that Newbridge was mentioned on
some internet websites does not show that it is a generally known location to the
American public).
We find there is no evidence in the record that shows CHALMERS has a non-
surname significance.
D. Whether CHALMERS Has the Structure and Pronunciation of a
Surname
During examination, the Examining Attorney presented no evidence of how
members of the public would perceive the structure and sound of CHALMERS and
whether they would be likely to perceive it as similar to the structure and sound of
other surnames, common words, or coined terms. In re Adlon Brand Gmbh & Co., 20
USPQ2d 1717, 1724 (TTAB 2016). Applicant argues, without any evidentiary
support, that CHALMERS has the structure of a given name, and “more closely
resembles a number of given names, such as Chandler, Charles, Chadwick, Chase,
and Chester, among many others.” 6 TTABVUE 4. As stated, attorney argument is
no substitute for evidence. We find this factor neutral in our determination.
Serial No. 79206511
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E. Whether the stylization of the lettering is distinctive enough to create a
separate commercial impression.
Applicant’s stylization of uses a script-type
connected lettering style which is not unusual and the letters are readily discernible.
However, Applicant argues that the stylization of CHALMERS is sufficiently
distinctive to create a separate non-surname impression. Benthin, 37 USPQ2d at
1334 (TTAB 1995). Applicant submits that its “mark is depicted in a unique bolded
script that at first glance appears more like a design than a stylized word.” 6
TTABVUE 5.
To further support its argument, Applicant refers to third-party registrations with
similar stylization, arguing that “the register is replete with stylized surname
marks.” 6 TTABVUE 5-6. Applicant did not submit electronic copies of third-party
registrations during prosecution of its application but submitted a listing of third-
party registrations in table form consisting of the stylized registered mark and the
registration number.8
In response, the Examining Attorney argues that many of these examples are not
relevant because some of the marks would not be viewed as surnames (e.g.,
Alexander, Giselle and Kelsey) and “it is impossible to determine [from the list of

8 The Examining Attorney did not object to the list of registrations and discussed them. We
consider the Examining Attorney to have waived any objection to the list itself, and have
considered the list for whatever probative value it may have. In re City of Houston, 101
USPQ2d 1534, 1536 (TTAB 2012).
Serial No. 79206511
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registrations] if the marks were found to have surname significance, but ultimately
considered not to be primarily merely surnames because they were stylized.” 8
TTABVUE 6.
We agree with the Examining Attorney that the list of third-party registrations is
not sufficiently probative. As noted by the Examining Attorney some of these
registered marks appear to be given names rather than surnames, and the list of
registrations does not include enough information for us to determine the Office’s
treatment of stylized marks that may be surnames. Moreover, as is often stated, each
case must stand on its own merits. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001).
We find nothing in the script look of the letters that would be sufficient to create
a distinct commercial impression apart from the impression that CHALMERS is
someone’s surname. See In re Pickett Hotel Company, 229 USPQ 760, 763 (TTAB
1986) (“The style of lettering … is clearly not so distinctive as to create any separate
commercial impression in the minds of purchasers.”).
III. Conclusion
Taking the relevant factors together, we find that the record, as a whole,
establishes the primary significance of to the purchasing
public is that of a surname and we affirm the refusal on this ground.
Serial No. 79206511
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IV. Identification Requirement
The Examining Attorney made final her requirement that Applicant’s
identification of services be made more definite, particularly the wording “retail and
wholesale services” and “online store and wholesale services.” In its request for
reconsideration, Applicant provided an amendment to the identification for the
wording “retail and wholesale services” which the Examining Attorney found
partially complied with the identification requirement. In denying reconsideration,
the Examining Attorney maintained the identification requirement for the wording
“online store and wholesale services featuring clothing, footwear, headgear,
sleepwear, pyjamas, dressing gowns, underwear, lingerie, sleep masks, socks,
slippers, gloves, mittens, scarves, textiles and textile goods, linen, bedlinen, bed
covers, blankets, pillowcases, sheets, towels, table covers, candles, soaps, body wash,
body lotions, hand creams, leather and imitations of leather and goods made from
those materials, bags, plush toys.”
The USPTO has discretion to require the degree of particularity deemed necessary
to clearly identify the services covered by the mark. In re Omega SA, 494 F.3d 1362,
83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007); In re Water Gremlin Co., 635 F.2d 841,
208 USPQ 89, 91 (CCPA 1980). An applicant’s failure to comply with a requirement
that the identification of services be made acceptably definite is a ground for refusing
registration. Id. We agree with the Examining Attorney’s conclusion that the phrase
“online store and wholesale services” is indefinite as the nature of the online store
and wholesale services has not been specifically identified.
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Further, Applicant did not address this requirement in its brief, and has
effectively conceded that its current identification of services is indefinite. See In re
Harley, 119 USPQ2d 1755, 1758 (TTAB 2016) (Applicants’ failure to address refusals
is a basis for affirming the examining attorney’s refusal on all grounds); see also
TBMP § 1203.02(g) (“If an applicant, in its appeal brief, does not assert an argument
made during prosecution, it may be deemed waived by the Board.”).
We affirm the requirement for a more definite identification of services.

Decision: The refusal to register Applicant’s mark
under Section 2(e)(4) is affirmed. The refusal to
register Applicant’s mark based upon the requirement for an amended identification
of services is affirmed.