Delta Faucet Co.

Trademark Trial and Appeal Board

Aug 30, 2017

No. 86519156 (T.T.A.B. Aug. 30, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 30, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Delta Faucet Co.1
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Serial No. 86519156
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Edgar A. Zarins, Esq. of Masco Corp.,
for Delta Faucet Co.2

Douglas M. Lee, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Cataldo, Wolfson and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
Delta Faucet Company (“Applicant”) seeks to register on the Principal Register
the mark LUXFORD in standard characters for, “plumbing products, namely,
faucets, showerheads and toilets” in International Class 11.3

1 The original owner, Masco Corp. of Indiana, assigned the entire interest in the involved
application to “a sister company,” Delta Faucet Company. See 9 TTABVUE.
2 Applicant’s attorney is in-house counsel at Masco Corporation, Applicant’s parent company.
Id.
3 Application Serial No. 86519156, filed January 30, 2015, based on Applicant’s allegation of
its bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
Serial No. 86519156
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The Examining Attorney has refused registration under 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.
For the reasons set forth below, we affirm the refusal to register.
Section 2(e)(4) of the Trademark Act provides that absent a showing of acquired
distinctiveness under Section 2(f), 15 U.S.C. § 1052(f), registration on the Principal
Register must be refused if the proposed mark is “primarily merely a surname.” 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 as a whole to the
purchasing public is that of a surname. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d
1374, 123 USPQ2d 1411 (Fed. Cir. 2017); see also In re Beds & Bars Ltd., 122 USPQ2d
1546, 1548 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1277 (TTAB
2016). Various inquiries or factors may be considered in the factual determination of
whether the purchasing public would perceive a proposed mark as primarily merely
a surname, including the following that have been raised in this case: whether the
term has a non-surname, “ordinary language” meaning; the extent to which the term
is used by others as a surname – i.e., rarity; whether the term has the structure and
pronunciation of a surname; and whether the public may perceive the mark, in the
alternative, to be primarily a meaningless, coined term. See In re Etablissements
Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653-54 (Fed. Cir. 1985); Eximius Coffee,
120 USPQ2d at 1278 n.4 (reviewing factors from Darty and In re Benthin Mgmt.
GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) and noting there is no need to discuss
Serial No. 86519156
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other inquiries for which the record lacks relevant evidence); In re Adlon Brand
GmbH & Co., 120 USPQ2d 1717, 1719, 1721 (TTAB 2016) (noting the consideration,
if there is relevant supporting evidence of record, “of an alternative perceived
meaning (which may include the perception of the mark as a coined term)”). We
conduct our analysis from the perspective of the purchasing public because “it is that
impact or impression which should be evaluated in determining whether or not the
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)).
In support of the refusal, the Examining Attorney introduced the following
evidence:
• Search results from the Lexis.com Surname Database showing 212
entries for “Luxford.” See March 15, 2015 Office Action.

• Search results from thefreedictionary.com and the online Oxford English
Dictionary showing no recognized meaning for “Luxford” as a word in
the U.S. English language. See March 13, 2015 Office Action and
September 15, 2015 Office Action.

• An entry for “Luxford” from HouseofNames.com showing the Luxford
family crest, and providing background on the early origins and history
of the Luxford family and the earliest Luxford settler in the United
States. See September 15, 2015 Office Action.

• A Wikipedia entry for “Luxford,” stating that “Luxford is a surname….”
See September 15, 2015 Office Action.

• An entry for “Luxford” from The Internet Surname Database providing
background on “[t]his interesting surname.” Id.

• An entry in the IMDb database for “Robert Luxford,” identified as an
actor and director with 16 acting credits. Id.

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• A webpage for the House Clinic medical practice featuring the biography
of William M. Luxford, M.D. Id.

This evidence demonstrates that “Luxford” is an actual surname, and that “Luxford”
has no other “ordinary language meaning.” See Darty, 225 USPQ at 653; Adlon, 120
USPQ2d at 1721 (lack of dictionary entry for the applied-for mark created a “strong
inference” that the mark had no other non-surname meaning).
Applicant contends that LUXFORD “does not have the immediate connotation of
being a surname,” and instead “is an arbitrary term which exudes a high end,
expensive product collection.” 4 TTABVUE 1 (Applicant’s Brief). Applicant also
argues that the “small number of surname occurrences found by the Examining
Attorney” supports its position. Id.
No set rule governs the kind or amount of evidence necessary to show that the
applied-for mark would be perceived as primarily merely a surname. Eximius Coffee,
120 USPQ2d at 1278. We reject Applicant’s argument that the rarity of LUXFORD
as a surname means that the public is unlikely to view it as primarily merely a
surname. The evidence of individuals in a number of locations in the United States
who bear the LUXFORD surname show that it “is not so unusual that such
significance would not be recognized by a substantial number of persons.” Darty, 225
USPQ at 653. Moreover, “even a rare surname is unregistrable if its primary
significance to purchasers is a surname.” Id. at 1281; see also In re Industrie Pirelli
Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir.
1989) (holding that despite the rarity of “Pirelli” as a surname, the relevant public
still would view it primarily as a surname). The statutory provision makes no
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distinction between rare and commonplace surnames. Adlon, 120 USPQ2d at 1721;
Eximius Coffee, 120 USPQ2d at 1282.
Applicant raises unsupported arguments inquiring into the “look and feel” of
LUXFORD and whether it would be perceived as an arbitrary, coined term. 4
TTABVUE 1 (Applicant’s Brief). As to the “look and feel” of the term, more properly
addressed as the structure and pronunciation of the mark, in the absence of any
objective evidence of the relevant public’s perception, this attorney argument fails to
overcome the evidence of surname significance. See Adlon, 120 USPQ2d at 1724
(rejecting an argument based on structure and pronunciation because “[w]ith respect
to this difficult type of argument, we would require more objective evidence, whether
from Applicant or the Examining Attorney, of how members of the public would
perceive the structure and sound … and whether they would be likely to perceive it
as similar to the structure and sound of other surnames, common words or coined
terms.”). Similarly, Applicant provided no evidentiary support for its argument that
LUXFORD would be viewed as “an arbitrary term,” 4 TTABVUE 1, and the argument
therefore carries little weight. See Adlon, 120 USPQ2d at 1719 (stating that
consideration will be given to whether the public may perceive the mark to be
primarily a meaningless, coined term only “if there is evidence to so indicate”). “In
order to show that the public would perceive a proposed mark as a coinage, in the
face of evidence establishing that the mark is a surname with no other recognized
meaning, some objective countervailing evidence of such a perception is required.” Id.
at 1723.
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Overall, the record contains multiple sources showing that LUXFORD is an actual
surname and that no other meaning exists. Applicant’s unsupported argument that
consumers would view the term as an arbitrary brand name is unconvincing. Thus,
on this record, the “primary significance of the mark as a whole to the purchasing
public” is that of a surname. LUXFORD would be perceived by the purchasing public
as primarily merely a surname within the meaning of Section 2(e)(4) of the
Trademark Act.
Decision: The refusal to register is affirmed.