Delta Faucet Co.

Trademark Trial and Appeal Board

Sep 29, 2016

No. 86090420 (T.T.A.B. Sep. 29, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Delta Faucet Co.1
_____

Serial No. 86090420
_____

Edgar A. Zarins of Masco Corp.,
for Delta Faucet Co.2
Parker W. Howard, Trademark Examining Attorney, Law Office 117,
Helen Bryan-Johnson, Managing Attorney.
_____

Before Cataldo, Lykos and Masiello,
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 Co. 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 Corp., the parent company
of both Masco Corp. of Indiana and Delta Faucet Co. and was authorized to represent
Applicant. See Board Inquiry dated June 29, 2016 and Applicant’s Response dated July 13,
2016.

Serial No. 86090420
- 2 -

Delta Faucet Co. (“Applicant”) seeks registration on the Principal Register of the
mark TRASK in standard characters for, as amended, “[p]lumbing products, namely,
faucets” in International Class 11.3
The Trademark Examining Attorney has 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.
When the refusal was made final, Applicant appealed. The appeal is now briefed.
For the reasons set forth below, we affirm the refusal to register.
I. Evidentiary Issue
Before addressing the substance of this appeal, we will consider first the
Examining Attorney’s objection to Applicant’s submission of new excerpts from the
third-party web site Trask.com with its main brief as untimely. Trademark Rule
2.142(d), 37 C.F.R. § 2.142(d), provides in relevant part that “[t]he record in the
application should be complete prior to the filing of an appeal. The Trademark Trial
and Appeal Board will ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal is filed.” Insofar as the
Examining Attorney, in his brief, has timely interposed an objection to Applicant’s
late-filed evidence, the objection is sustained, and the evidence submitted
concurrently with Applicant’s appeal brief has been given no consideration.4 See e.g.,

3 Application Serial No. 86090420, filed October 14, 2013, pursuant to 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 We hasten to add that consideration of this evidence would not have altered our
determination.
Serial No. 86090420
- 3 -

In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593,
1596 (TTAB 2014). See also Trademark Trial and Appeal Board Manual of Procedure
(“TBMP”) § 1207.01 (2016) and cases cited therein at Note 1.
II. Surname Refusal
We now consider the substantive refusal before us. Section 2(e)(4) of the
Trademark Act of 1946 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.” “The test for
determining whether a mark is primarily merely a surname is the primary
significance of the mark as a whole to the purchasing public.”5 In re Hutchinson
Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988) (citing In re Kahan
& Weisz Jewelry, Mfg. Corp., 508 F.2d 831, 184 USPQ 421, 422 (CCPA 1975)). See
also Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975)). “[I]t is

5 Applicant and the Examining Attorney both cite to In re Benthin Management GmbH, 37
USPQ2d 1332, 1335 (TTAB 1995). The oft-cited “Benthin factors” are examples of inquiries
that may lead to evidence regarding the purchasing public’s perception of a term’s primary
significance. In re Integrated Embedded, __ USPQ2d __ (TTAB 2016) (Ser. No. 86140341). 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). “These 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, __ USPQ2d __ (TTAB 2016) (Ser. No. 86140341).

Serial No. 86090420
- 4 -

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., 186 USPQ at 239. See also In re Hutchinson Technology, 7
USPQ2d at 1492 (quoting Kahan & Weisz Jewelry Mfg. Corp., 184 USPQ at 422)). In
evaluating whether a proposed mark is “primarily merely a surname,” we consider
whether “it is also a word having ordinary language meaning” since “[t]he language
meaning is likely to be the primary meaning to the public.” In re Etablissements Darty
et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985) (citing Fisher Radio Corp. v.
Bird Electronic Corp., 162 USPQ 265, 266-67 (TTAB 1969) (BIRD not primarily
merely a surname)). If, however, 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.” Id.
The Examining Attorney has introduced the following relevant evidence:
● The search results from the Mongabay.Com web site
(http://names.mongabay.com/data/surnames_Bh.htm) showing TRASK
appearing 5,878 times as a surname based on data derived from David. L.
Word, Charles D. Coleman, Robert Nunziata and Robert Kominski (2008)
“Demographic Aspects of Surnames from Census 2000” U.S. Census Bureau.
(January 14, 2014 Office Action).

● The search results from the SuperPages.com web site
(http://wp.superpages.com/people/Trask) showing over 100 entries for the
surname TRASK in various locations in the United States. (January 14, 2014
Office Action).

● An entry entitled “Trask” from Wikipedia showing “People with the surname
Trask” and a list of well-known individuals bearing the surname as well as
fictional characters. (July 17, 2014 Final Office Action).

Serial No. 86090420
- 5 -

● Entries entitled “John Trask (soccer),” “Katrina Trask,” “Orville Trask,” and
“Ozell Miller Trask” from Wikipedia. (July 17, 2014 Final Office Action).

● Printout from the third-party leather goods and accessories web site Trask:
The Story of a man who followed a river and found his dream
(http://www.trask.com/our-story.html) about H.R. Trask (July 17, 2014 Final
Office Action).

Applicant, while acknowledging that TRASK appears “on a limited basis” as a
surname in public records, argues that the immediate connotation of the term to the
purchasing public is not a surname but rather that of an arbitrary term used as a
source identifier. Applicant’s Brief, 4 TTABVUE 2. As Applicant contends, TRASK
lacks that “initial look and feel of a surname” because of “the simple yet hard cadence
of the term.” Id. Continuing, Applicant asserts that with “the proliferation of
electronic records, almost any term can be found to be a surname.” Id. Applicant also
contends that the mark TRASK is not “merely” a surname because it has been used
to identify other products from other sources, as shown in the Trask web site excerpt
submitted by the Examining Attorney. With regard to the Trask web site, Applicant
asserts that there is no evidence that an individual name H.R. Trask ever even
existed; rather, the reference is merely a marketing tool to portray the offered
footwear as rugged.
Applicant’s arguments are unconvincing. At the outset, we observe that Applicant
has not submitted evidence of any non-surname meanings of the mark. While
Applicant essentially argues that TRASK is such a rare surname that the public is
unlikely to view it as primarily merely a surname, the statute makes no distinction
between rare and commonplace surnames. Kahan & Weisz Jewelry, Mfg. Corp., 184
Serial No. 86090420
- 6 -

USPQ at 422. In addition, the Examining Attorney introduced evidence that other
individuals in a number of locations in the United States bear the surname TRASK.
Thus, the surname TRASK “is not so unusual that such significance would not be
recognized by a substantial number of persons.” In re Etablissements Darty et Fils,
225 USPQ at 653. Even assuming, arguendo, that TRASK 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 e.g., 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). Lastly, with regard to Applicant’s argument that TRASK does
not have the structure and pronunciation of a surname, 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. Applicant has
failed to submit evidentiary support for its argument that consumers are unlikely to
perceive the mark primarily merely as a surname due to its monosyllabic nature.
In sum, the Examining Attorney has made of record sources showing that TRASK
is a surname. The record shows no other meanings of the term “Trask,” and we have
no evidence showing consumer perception of the term as an arbitrary or fanciful
trademark. Thus the evidence indicates that the “primary significance of the mark as
a whole to the purchasing public” is that of a surname.
Serial No. 86090420
- 7 -

Accordingly, we find that that the record establishes that the mark TRASK for
“[p]lumbing products, namely, faucets” is primarily merely a surname within the
meaning of Section 2(e)(4) of the Trademark Act.
Decision: The surname refusal to register Applicant’s mark TRASK for
“[p]lumbing products, namely, faucets” under Section 2(e)(4) is affirmed.