Delta Faucet Co.

Trademark Trial and Appeal Board

Aug 17, 2017

No. 86519140 (T.T.A.B. Aug. 17, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 17, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Delta Faucet Co.1
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Serial No. 86519140
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Edgar A. Zarins of Masco Corp.,
for Delta Faucet Co.2

Douglas M. Lee, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Taylor, Lykos and Lynch,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

1 Subsequent to the institution of this appeal, on February 19, 2015, the original owner,
Masco Corp. of Indiana assigned the entire interest in the involved application to Delta
Faucet Company. See “Trademark Assignment Abstract of Title” at Reel/Frame 5467/0825,
recorded on February 24, 2015.
2 The attorney of record for Applicant is in-house counsel at Masco Corporation, the parent
company of both Masco Corporation of Indiana and Delta Faucet Company. See Board
Inquiry dated June 29, 2016 and Applicant’s Response dated July 13, 2016.
Serial No. 86519140
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Delta Faucet Company (“Applicant”) seeks to register on the Principal Register
the mark PIERPONT in standard characters for, as amended, “plumbing products,
namely, faucets, showerheads and toilets” in International Class 11.3
The Trademark Examining Attorney has 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
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.”4 The
underlying rationale is the “notion that a surname is ‘shared by more than one
individual, each of whom may have an interest in using his surname in business.’”
Earnhardt v. Kerry Earnhardt, Inc., 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting
In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (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 as a whole to the
purchasing public is that of a surname. Earnhardt v. Kerry Earnhardt, Inc., 123

3 Application Serial No. 86519140, filed January 30, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
4 “No trademark by which the goods of the applicant may be distinguished from the goods of
others shall be refused registration on the principal register on account of its nature unless
it ... (e) Consists of a mark which ... (4) is primarily merely a surname.” 15 U.S.C. § 1052(e)(4).

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USPQ2d at 1413 (internal citation omitted). See also In re Beds & Bars Ltd., 122
USPQ2d 1546, 1548 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1277
(TTAB 2016); In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000). 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, supra. In Darty, the
U.S. Court of Appeals for 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 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 focus on 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. If it is, and it is only that, then it is primarily
merely a surname.” 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 In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995)
(“Benthin”), the Board identified several examples of inquiries or “factors” that may
lead to evidence regarding whether the primary significance of a term to the
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purchasing public is merely as a surname.5 “These [Benthin] factors are not exclusive
nor 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.” In re Integrated
Embedded, 120 USPQ2d 1504, 1506 n.4 (TTAB 2016). For example, there may be
“contextual clues” regarding use of a proposed mark as a surname. See, e.g., Azeka
Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1483 (TTAB 2017) (use of possessive form
indicative of surname).
Whether the primary significance of an applied-for mark is merely that of a
surname is a question of fact. Darty, 225 USPQ at 653-54. This question must be
resolved on a case-by-case basis. Id. at 654.
With these guidelines in mind, we now turn to the substantive issue before us. In
support of the refusal, the Examining Attorney has introduced the following evidence:
● Search results from the Lexis.com surname database showing 1,156
entries for “Pierpont.” See March 13, 2015 Office Action.

● Search results from thefreedictionary.com showing no recognized
meaning for “Pierpont” as a word in the U.S. English language, but

5 The Examining Attorney cites this opinion which is entirely consistent with the Court of
Appeals for the Federal Circuit and its predecessor court and Board cases discussed herein.
In Benthin, the Board stated that 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 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). However, rather than using these factors as guidelines, practitioners and
examining attorneys have often interpreted them with a rigidity that is not warranted.” In
re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1719 (TTAB 2016).
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instead stating “Pierpont” may refer to a surname with Norman-English
origins and listing the following individuals bearing this surname:6

Francis Harrison Pierpont, Governor of Virginia, 1865-1868
Harry Pierpont, gangster
James Pierpont (Yale founder)
James Pierpont (musician)
James Pierpont (mathematician)
John Pierpont, poet
Lena Pierpont, Prohibition historical figure

See March 13, 2015 Office Action.

Based on this evidence, the Examining Attorney has demonstrated that “Pierpont” is
an actual surname. The negative dictionary evidence noted above also shows that it
has no other “ordinary language meaning.” See Darty, 225 USPQ at 653. See also
Adlon, 120 USPQ2d at 1721 (TTAB 2016) (finding that evidence showing that the
applied-for mark did not appear in dictionaries created a “strong inference” that the
mark has no other non-surname meaning) and Eximius Coffee, 120 USPQ2d at 1280.
In cases such as this where there is “no common word meaning,” we must decide
the “more difficult question” of whether the mark “would be perceived as a surname
or as an arbitrary term.” Darty, 225 USPQ at 653. In other words, “[w]e also
consider—if there is evidence to so indicate—whether the public may perceive the
mark to be primarily a meaningless, coined term.” Adlon, 120 USPQ2d at 1719. In
this regard, Applicant contends that its proposed mark PIERPONT is an arbitrary

6 This entry also shows that “Pierpont” is the middle name of well-known bankers J. P.
Morgan and J. P. Morgan Jr. Other evidence in the record establishes, however, that the J.P.
Morgan middle name “Pierpont” is derived from the surname of their maternal ancestor,
James Pierpont, a founder of Yale University. See excerpt entitled “J.P. Morgan” from
history.com attached to September 15, 2015 Office Action.

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term, evoking “a high end, expensive product collection” lacking the “look and feel” of
a surname. Brief, p. 1; 9 TTABVUE 2. Applicant also argues that PIERPONT is not
primarily merely a surname because it possesses other well-recognized meanings,
such as the “Pierpont prime” in mathematics, a particular sequence of prime
numbers. See excerpt from Wolfram Mathworld attached to September 9, 2015
Response.
The existence of such usages other than as a surname does not necessarily
preclude the mark from being held primarily merely a surname. The Pierpont prime
derives its name from the surname of James Pierpont, the mathematician who
devised this concept, thereby emphasizing its primary significance as a surname. See
excerpt from Wikipedia entitled “Pierpont prime” attached to September 15, 2015
Office Action. Inventions, theories, methods, and the like are frequently known by
the surname of their originator, precisely because the surname so used reminds
others of that person. See, e.g., In re The British Oxygen Co. Ltd., 161 USPQ 242, 242
(TTAB 1969) (“[T]he significance of “BOYLE” in Boyle’s Law and Boyle temperature
is clearly that of a surname.”).
Applicant also argues that the Examining Attorney has introduced minimal
evidence to support the refusal, and that the number of “surname occurrences” is
“small.” Id. There is no rule regarding 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. To the extent that Applicant is arguing that
“Pierpont” is such a rare surname that the public is unlikely to view it as primarily
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merely a surname, we find this argument to be unconvincing. The Examining
Attorney introduced evidence that other individuals in a number of locations in the
United States bear the surname “Pierpont.” See search results from the Lexis.com
surname database attached to March 13, 2015 Office Action. Thus, this surname “is
not so unusual that such significance would not be recognized by a substantial
number of persons.” Darty, 225 USPQ at 653. Even assuming, arguendo, that
“Pierpont” is indeed a relatively rare surname, a rare surname may be unregistrable
under Trademark Act Section 2(e)(4) if its primary significance to purchasers
nonetheless is that of a surname. See In re Industrie Pirelli Societa per Azioni, 9
USPQ2d 1564, 1566 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989) (although the
record proves that “Pirelli” is a rare surname, the evidence shows that mark PIRELLI
would be viewed primarily as a surname by the relevant public). See also In re Petrin
Corporation, 231 USPQ 902, 904 (TTAB 1986). That is to say, the statute makes no
distinction between rare and commonplace surnames. Kahan & Weisz Jewelry, 184
USPQ at 422. See also Eximius Coffee, 120 USPQ2d at 1282.
Lastly, to address Applicant’s argument that the mark PIERPONT does not have
the “look and feel” of a surname (Brief, p. 1), in the absence of more objective evidence
of the relevant public’s perception of the primary significance of the mark, we decline
to find that this argument, which is highly subjective, serves to rebut the Examining
Attorney’s evidence of its surname significance. See In re Weiss Watch Co., 123
USPQ2d 1200, 1206 (TTAB 2017) (“In view of the absence of evidence or argument as
to whether the proposed mark has the structure and pronunciation of a surname, we
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cannot make a determination as to how members of the public perceive the structure
and pronunciation….”). Applicant has failed to submit evidentiary support for its
argument that consumers are unlikely to perceive the mark primarily merely as a
surname.
In sum, the Examining Attorney has made of record multiple sources showing that
PIERPONT is an actual surname and that there are no other commonly recognized
meanings. Applicant’s argument that its applied-for mark represents an arbitrary
brand name fails for the reasons explained above. Thus, on this record, the “primary
significance of the mark as a whole to the purchasing public” is that of a surname,
despite the absence in the record showing that Applicant or anyone associated with
Applicant bears the surname.
Accordingly, we find that that the evidence establishes that the mark PIERPONT
for “plumbing products, namely, faucets, showerheads and toilets” 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.