Envisage Group

Trademark Trial and Appeal Board

Oct 12, 2018

No. 87004082 (T.T.A.B. Oct. 12, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 12, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Envisage Group
_____

Serial No. 87004082
_____

Erik M. Pelton of Erik M. Pelton & Associates, PLLC,
for Envisage Group.
Timothy J. Callery, Trademark Examining Attorney, Law Office 121,
Kevin Mittler, Managing Attorney.
_____

Before Kuczma, Adlin, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Envisage Group (“Applicant”) seeks registration on the Principal Register of the
proposed mark THACKER in standard characters for the following goods (as
amended):
Small leather goods in the nature of leather credit card
cases, leather key chains, pouches of leather, luggage tags;
small imitation leather goods in the nature of imitation
leather credit card cases, imitation leather key chains,
pouches of imitation leather, luggage tags; handbags,
luggage, travel bags, briefcases, cosmetics bags sold empty,
backpacks, duffle bags, all-purpose carrying bags,
suitcases, wallets, all made of leather; handbags, luggage,
travel bags, briefcases, cosmetics bags sold empty,
Serial No. 87004082
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backpacks, duffle bags, all-purpose carrying bags,
suitcases, wallets, all made of imitation leather; apparel,
namely, pet clothing, in International Class 18, and
Belts made of leather; belts made of imitation leather; belts
made of nylon, belts made of natural fiber; shoes; apparel,
namely, blazers, jackets, coats, scarves, dresses, blouses, t-
shirts, sweaters, shorts, pants, leggings, skirts, swimwear;
and outerwear, namely, coats, jackets, capes and parkas;
knit shirt, knit tops and bottoms, in International Class
25.1
The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark on the ground that THACKER is “primarily merely a surname” within
the meaning of Section 2(e)(4) of the Trademark Act, 15 U.S.C. Section 1052(e)(4).2
When the Examining Attorney made the refusal final, Applicant appealed. Applicant
and the Examining Attorney have filed briefs. We affirm the refusal to register.
I. Record on Appeal
The record on appeal consists of the following:
1. Pages from whitepages.com listing selected results from a search for
persons in the United States with the surname “Thacker,” made of record
by the Examining Attorney;3

1 Application Serial No. 87004082 was filed on April 18, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.
2 The final office action also included a refusal based on the indefiniteness of Applicant’s
identification of goods. Following the briefing, Applicant requested and was granted a
remand to amend the identification, and the Examining Attorney accepted the amendment.
9 TTABVUE. As a result, the surname refusal is the only issue remaining for decision.
3 August 3, 2016 Office Action at 2-6.
Serial No. 87004082
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2. A Wikipedia entry listing various living and deceased persons with the
surname “Thacker,” made of record by the Examining Attorney;4
3. The results of searches for the word “thacker” in the online OXFORD
ENGLISH DICTIONARY (oxforddictionaries.com) and the CAMBRIDGE
DICTIONARY (dictionary.cambridge.org), made of record by the Examining
Attorney;5
4. Pages from Applicant’s website at thackernyc.com, made of record by
Applicant;6
5. Definitions of the word “thacker” from the MERRIAM-WEBSTER DICTIONARY
(merriam-webster.com) and of the word “thatcher” from THE FREE
DICTIONARY (freedictionary.com), made of record by Applicant;7
6. An article from The Financial Times (ft.com), made of record by Applicant;8
7. An interview of Applicant’s founder Toni Hacker from Fashion Spot
magazine (thefashionspot.com), made of record by Applicant;9
8. An article regarding Applicant and its THACKER brand from Women’s
Wear Daily (wwd.com), made of record by Applicant;10

4 August 3, 2016 Office Action at 7-8.
5 Id. at 9-13.
6 February 3, 2017 Response to Office Action at 7-11.
7 Id. at 12-19.
8 Id. at 22-27.
9 Id. at 28-35.
10 Id. at 36-39.
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9. Excerpts from the 2010 United States Census (census.gov) listing the 10
most common surnames in the Census and showing that the surname
“Thacker” ranked 1,677th in a ranking of frequency of surnames in the
United States, made of record by Applicant;11
10. A spreadsheet from the 2010 United States Census showing the number of
persons in the United States with the surname “Thacker” and with other
surnames, made of record by the Examining Attorney;12 and
11. A definition of the word “thatcher” from the MERRIAM-WEBSTER
DICTIONARY (merriam-webster.com), made of record by the Examining
Attorney.13
II. Analysis of Surname Refusal
Section 2(e)(4) of the Trademark Act prohibits registration on the Principal
Register of a mark that is “primarily merely a surname,” unless the mark has
acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f).14 “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.”15 In re Olin Corp., 124 USPQ2d 1327, 1330 (TTAB 2017) (citing

11 February 3, 2017 Response to Office Action at 40-43.
12 March 6, 2017 Office Action at 2.
13 Id. at 3.
14 Applicant did not make a claim of acquired distinctiveness during prosecution.
15 Applicant’s brief refers to “the public” and “the general public,” 4 TTABVUE 10, while the
Examining Attorney’s brief focuses on “the public’s” perception of the proposed mark. 7
TTABVUE 3-6. By their nature, the goods identified in the application are purchased by
Serial No. 87004082
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Earnhardt v. Kerry Earnhardt, Inc., 846 F.3d 1374, 123 USPQ2d 1411, 1413 (Fed.
Cir. 2017)). When
we are faced with a Section 2(e)(4) refusal of a term in
standard character form, with no other literal or design
elements, we consider the impact the applied-for term has
or would have 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.”
Id. (quoting In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA
1975) (internal quotation omitted)).
“There is no rule as to the kind or amount of evidence necessary to make out a
prima facie showing that the applied-for mark would be perceived as primarily
merely a surname,” and the “question must be resolved on the specific facts presented
in each case.” Olin, 124 USPQ2d at 1330; see also In re Eximius Coffee, LLC, 120
USPQ2d 1276, 1278 (TTAB 2016). We must examine the entire record and consider
any “evidence regarding the purchasing public’s perception of a term’s primary
significance.” Olin, 124 USPQ2d at 1330. Such evidence may include “whether the
applicant adopted a principal’s name and used it in a way that revealed its surname
significance; whether the term [has] a nonsurname ‘ordinary language’ meaning; and
the extent to which the term [is] used by others as a surname,” id. (citing In re
Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985)), as

members of the general public, and we agree with Applicant and the Examining Attorney
that it is the general public’s perception of the proposed mark that matters.
Serial No. 87004082
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well as whether the term has the “structure and pronunciation” of a surname. Id. at
1332. “These considerations are not exclusive, and any of these circumstances singly
or in combination and any other relevant facts may shape the analysis in a particular
case.” Id. at 1330. The four considerations discussed in Olin are the pertinent ones
here as well.16
A. Public Exposure to Use of THACKER as a Surname
“We first consider the frequency of, and public exposure to, the term [THACKER’s]
surname use,” id., which is probative of “‘whether the purchasing public for
Applicant’s [goods] is more likely to perceive Applicant’s proposed mark as a surname
rather than as anything else.’” Id. at 1330-31 (quoting In re Beds & Bars Ltd., 122
USPQ2d 1546, 1551 (TTAB 2017)).
The Examining Attorney made of record excerpts from “whitepages.com” that he
argues show “the applied-for mark appearing more than 26,000 times as a surname
in a nationwide phone directory of names,”17 as well as “evidence from Wikipedia
listing a number of well-known individuals who have or had the surname

16 No one associated with Applicant has the surname Thacker. Applicant argues that this
“weighs strongly in Applicant’s favor,” 4 TTABVUE 9, while the Examining Attorney argues
that “this factor is neutral in determining whether the applied-for mark would be primarily
viewed as a surname.” 7 TTABVUE 3. We agree with the Examining Attorney. Although the
presence in Applicant’s business of a person named Thacker “would enhance the public’s
perception of the term as a surname,” In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717,
1724 (TTAB 2016), the absence of such a person “does not, in itself, reduce the likelihood that
the public would perceive the mark as a surname.” Id.
17 August 3, 2016 Office Action at 2-6.
Serial No. 87004082
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‘THACKER.’” 7 TTABVUE 3.18 He argues that “this surname is not rare and is likely
to be encountered by consumers as a surname in the United States.” Id.
Applicant counters that this evidence “only showed a small selection of the search
results [and] it is unknown how many entries are duplicates or outdated.” 4
TTABVUE 10. Applicant also points out that the record contains no news articles or
other evidence of public exposure to the surname Thacker.19 Id. Applicant concludes
that “there is no evidence that the general public has been exposed to the term
THACKER as a surname.” Id.
While the Examining Attorney provided only selected results from his search in
the whitepages.com search engine, they list the number of persons with the surname
Thacker in each of 20 different states,20 and identify specific persons named Thacker

18 Id. at 7-8.
19 Applicant does not specifically discuss the Wikipedia evidence, which we find has limited
probative value on the issue of the extent of the public’s exposure to the surname. The
Wikipedia pages list 14 persons who are identified as Americans with that surname (e.g.,
“Brian Thacker (born 1945), American army officer, recipient of the Medal of Honor for action
during the Vietnam War”), but none of the listed persons are obviously well known to the
point that we could assume the public’s familiarity with them without supporting evidence.
Cf. Beds & Bars, 123 USPQ2d at 1551 (“the celebrity of John Belushi and the continuing
media attention on Jim Belushi support a finding that a substantial portion of Americans
know BELUSHI to be a surname” even though only five persons in the United States had the
name). The Examining Attorney did not include the separate Wikipedia pages for each
person, which appear to have been accessible through links in the list, and which might have
provided further evidence of how well the listed persons are known to the public. See Olin,
124 USPQ2d at 1331 (discussing separate Wikipedia entries for five persons with the
surname Olin); In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004) (discussing evidence of
public exposure to the surname Rogan). The Wikipedia list merely confirms that some
Americans have the surname Thacker, but does not show the extent of its exposure to the
public.
20 August 3, 2016 Office Action at 2. In 10 states, the number of such persons is listed simply
as exceeding 1,000.
Serial No. 87004082
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in Virginia, Georgia, New Jersey, Kentucky, Ohio, Michigan, and North Carolina.21
We find that the whitepages.com evidence is probative of the number of Americans
with the surname Thacker, and it is corroborated by the 2010 Census data made of
record by both Applicant and the Examining Attorney,22 which shows that about six
years before the Examining Attorney’s whitepages.com search, 21,512 people in the
United States had the surname, which ranked as the 1,677th most common American
surname.
“[E]vidence that some individuals actually bear the surname [Thacker]
necessarily supports the proposition that this term would be perceived as a surname,
although a surname’s rareness may be relevant to determining whether the primary
significance of the mark as a whole to the purchasing public is that of a surname.”
Adlon, 120 USPQ2d at 1721. We find, on the basis of the whitepages.com and 2010
Census evidence, and the Wikipedia evidence, that Thacker is a not uncommon
surname in the United States. See Olin, 124 USPQ2d at 1331; cf. Eximius Coffee, 120
USPQ2d at 1280 (2000 Census data showing 233 persons named Aldecoa tended to
show that Aldecoa is a rare surname with limited public exposure in the United
States); Adlon, 120 USPQ2d at 1720.23
Applicant concedes that the surname Thacker “is not extremely rare,” 4
TTABVUE 11, and that this fact weighs “against Applicant’s arguments,” id. at 8, but

21 August 3, 2016 Office Action at 2-6.
22 February 3, 2017 Response to Office Action at 41; March 6, 2017 Office Action at 2.
23 It is well settled that “[e]ven a rare surname may be held primarily merely a surname if
its primary significance to purchasers is that of a surname.” Beds & Bars, 122 USPQ2d at
1551.
Serial No. 87004082
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argues that “the lack of any public exposure to the THACKER name balances against
the numbers of the name, for which the evidence produced is scant and at best the
THACKER surname is not among the top 1,600 American surnames.” Id. at 11. We
disagree.
The evidence shows that Thacker is not a rare surname in the United States, “and
therefore it is likely to be perceived by the public as having surname significance.”
Olin, 124 USPQ2d at 1331. The ultimate issue under Section 2(e)(4) is “[w]hether the
public would perceive the surname significance as the proposed mark’s primary
significance, not whether the surname is rarely encountered.” Adlon, 120 USPQ2d at
1721. We can infer, from the evidence indicating that more than 20,000 people in the
United States have the surname Thacker, that significantly more than 20,000
members of the American public have been exposed to the surname. Olin, 124
USPQ2d at 1331 (finding that Olin “is not rarely encountered as a surname” where
the 2010 Census counted 4,163 Americans with the surname); cf. Eximius Coffee, 120
USPQ2d at 1280-83 (holding that while Aldecoa was a rare surname, it was
nevertheless primarily merely a surname in the absence of any other non-surname
significance).
Because the evidence shows that Thacker is a surname in the United States, we
turn to the other record evidence to determine whether the applied-for mark has any
non-surname significance and, if so, whether that is its primary significance.

Serial No. 87004082
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B. Possible Non-Surname Meanings of THACKER
The Examining Attorney made of record “negative” dictionary evidence from the
OXFORD DICTIONARY and the CAMBRIDGE DICTIONARY showing that “thacker” is not
identified as an English word.24 “In the absence of any countervailing evidence
supplied by Applicant,” this evidence “establishes that [THACKER] has no recognized
meaning other than as a surname.” Olin, 124 USPQ2d at 1332; see also In re Weiss
Watch Co., 123 USPQ2d 1200, 1203 (TTAB 2017); Adlon, 120 USPQ2d at 1719-20.
Applicant “acknowledges that THACKER is not a commonly known word,” 4
TTABVUE 9, but nevertheless argues that it has non-surname significance because:
(1) “it does appear in the dictionary,” id., and (2) Applicant’s proposed mark “was
created from the name of its founder and lead designer, Toni Hacker.” Id. Neither
argument is persuasive.
Applicant relies on the MERRIAM-WEBSTER DICTIONARY (merriam-webster.com),
which indicates that the word “thacker” is a “dialectal variant of thatcher,”25 which a
separate dictionary defines as both the surname of Margaret Thatcher, the former
Prime Minister of the United Kingdom, and as “someone skilled in making a roof from
plant stalks or foliage.”26 We do not find that this entry shows a recognized, non-

24 August 3, 2016 Office Action at 9-13.
25 February 3, 2017 Response to Office Action at 13. The MERRIAM-WEBSTER entry also states
that “[t]his word doesn’t usually appear in our free dictionary, but we’ve shared just a bit of
information that appears in our premium Unabridged Dictionary. There’s more definition
detail there.” Id. Applicant did not make the additional “definition detail” of record. Applicant
also suggests that there are multiple “dictionary entries for the term THACKER,” 4
TTABVUE 9, but the record contains only the one from the MERRIAM-WEBSTER DICTIONARY.
26 Id. at 21 (FREE DICTIONARY (freedictionary.org). Applicant acknowledges that a “thatcher”
is a member of a “now-somewhat obsolete profession.” 4 TTABVUE 9 n.1.
Serial No. 87004082
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surname meaning of THACKER. “Thatcher” is, of course, not the term (or name) at
issue here, and Applicant provides no evidence of the extent, if any, to which “thacker”
would be recognized in the United States as a “dialectal variant of thatcher” rather
than as the surname of more than 20,000 people.
Applicant’s second argument is that its proposed “mark is ‘coined by combining
root element[s]’ of other terms, namely the given and last names of Applicant’s
founder and lead designer, Toni Hacker.” 4 TTABVUE 11 (quoting Gregory, 70
USPQ2d at 1796). Applicant claims that “[t]o the extent that consumers will ascribe
any significance to the THACKER mark, they would recognize the mark’s
identification of Ms. Hacker and not an unidentified, unconnected person with the
surname THACKER.” Id. at 9-10. We must “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, but there is no such evidence here.
There is nothing on the face of the mark to indicate that it is derived from Ms.
Hacker’s first and last names, either when the mark is rendered in standard
characters or as it is used:
27
In the absence of punctuation (e.g., T.HACKER), or other indicia (e.g., T HACKER)
that THACKER is anything other than a unitary word, we find that it “‘would not be
perceived as an initialism or acronym . . . and does not have the appearance of having

27 February 3, 2017 Response to Office Action at 8 (thackernyc.com).
Serial No. 87004082
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been coined by combining a root element that has a readily understood meaning in
its own right with either a prefix or suffix.’” Miller v. Miller, 105 USPQ2d 1615, 1621
(TTAB 2013) (quoting Gregory, 70 USPQ2d at 1796, which found that ROGAN
“appears to be a cohesive term with no meaning other than as a surname”)); see
TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) Section 1211.01(b)(iii)
(Oct. 2017) (noting that there is no per se rule as to whether a mark consisting of a
single initial followed by a surname is primarily merely a surname); In re Yeley, 85
USPQ2d 1150, 1153-54 (TTAB 2007) (same); see also In re I. Lewis Cigar Mfg.
Co., 205 F.2d 204, 98 USPQ 265, 266-67 (CCPA 1953) (holding that S. SEIDENBERG
& CO’S. was primarily merely a surname).
Promotion of a mark as a coined term is “legitimate evidence as to perceptions of
nonsurname significance,” In re Petrin Corp., 231 USPQ 902, 904 (TTAB 1986), but
there is no evidence that Applicant has expressly promoted the claimed derivation of
THACKER to the purchasing public. Applicant made of record a portion of its website
entitled “Our Story,” and three articles about its business and Ms. Hacker, including
“21 Questions with . . . Toni Hacker of Hayden-Hartnett” and “Toni Hacker Unveils
New Label Thacker,”28 but there is no discussion in any of these materials that
THACKER was “coined” by combining the first letter of Ms. Hacker’s first name with
her last name. Even assuming, however, that some readers of the articles and viewers
of the website would understand the mark THACKER in those materials to be a
contraction of “TONI” and “HACKER,” we must assess the perception of the public as

28 February 3, 2017 Response to Office Action at 8-11, 29-39.
Serial No. 87004082
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a whole, including those not exposed to the materials, and “we are not persuaded that
such perceptions would actually result or would displace the primary surname import
of the mark.” Id. (holding that PETRIN was primarily merely a surname despite
applicant’s argument that the mark was “derived from and represents an abbreviated
contraction of ‘petroleum’ and ‘insulation’” where the applicant’s specimen brochure
made “no attempt to establish or promote such a connection or to clarify or even hint
at the shorthand contraction”). We find that nothing in the record shows that
THACKER has a recognized, ordinary language meaning, or “coined” meaning, that
is more significant than its demonstrated meaning as a surname.
C. The Structure and Pronunciation of THACKER
“In support of their respective positions, applicants and examining attorneys may
submit evidence that, due to a term’s structure or pronunciation, the public would or
would not perceive it to have surname significance.” Olin, 124 USPQ2d at 1332.
Applicant argues that “there are many words in the English language that are quite
similar to THACKER but are not surnames.” 4 TTABVUE 11. It also argues that
“none of the most common 1000 surnames sound similar to the term THACKER,”
citing the 2010 Census data, and that “[w]ords such as HACKER, BACKER,
SACKER, STACKER, TACKER, TRACKER, PACKER, and more are related in sound
to THACKER and have clear non-surname significance.” Id.
The Examining Attorney responds that “numerous surnames either beginning
with ‘Thac-’ (e.g., ‘Thach,’ ‘Thackston,’ and ‘Thackery’) or ending in ‘-acker’ (e.g.,
‘Hacker,’ ‘Acker,’ ‘Packer,’ ‘Wacker,’ ‘Backer,’ ‘Tacker,’ ‘Blacker,’ and ‘Stacker’) are
Serial No. 87004082
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each common to at least 500 individuals in the United States as of the 2010 Census,”
7 TTABVUE 4,29 and that THACKER thus “has a structure and pronunciation that
would be widely recognized as that of a surname.” Id.
This particular inquiry into a mark’s significance “is frequently highly subjective
in nature,” Adlon, 120 USPQ2d at 1724, and involves a “difficult type of argument.”
Id. In Adlon, the Board rejected the examining attorney’s evidence of “other
purported surnames that have two syllables and end in -LON or -ON, like Dillon,
Kaplon, Hanlon, Yelon, Ablon, Scanlon, Fallon, Kellon, Freelon, Nealon, Allon,
Millon, Kallon, Donlon, Carlon, Dalton, Wilson, and Burton” because “[w]ith the
possible exception of Ablon and Allon, which differ from ADLON by one letter, the
surnames cited are not highly similar in structure to ADLON” and “evidence showing
that the surnames are similar in sound is lacking.” Id. The Board held that 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,” and that it would “require more objective
evidence, whether from Applicant or the Examining Attorney, of how members of the
public would perceive the structure and sound of ADLON and whether they would be
likely to perceive it as similar to the structure and sound of other surnames, common
words or coined terms.” Id.
The comparable surnames here are more similar to THACKER than the
comparable surnames in Adlon were to ADLON. Applicant concedes that the
comparable surnames Hacker, Backer, Stacker, Tacker, and Packer “are related in

29 March 6, 2017 Office Action at 2.
Serial No. 87004082
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sound to THACKER,” 4 TTABVUE 11, and we find that those surnames are
somewhat similar in structure to THACKER and share more than a mere “prefix,
suffix or letter string . . . .” Adlon, 120 USPQ2d at 1724. Applicant’s primary
arguments are that the comparable surnames are rare and that some “have clear non-
surname significance,” 4 TTABVUE 11, but that does not mean that THACKER does
not also have the structure and pronunciation of a surname. At a minimum, the
Examining Attorney’s evidence of surnames comparable in structure and
pronunciation to THACKER “reinforce[s] a conclusion that the term’s primary
significance is as a surname.” Gregory, 70 USPQ2d at 1796.
D. Conclusion
The record as a whole shows that THACKER is the surname of more than 20,000
people in the United States, including specific persons listed on Wikipedia, and we
can infer from that number that at least tens of thousands of members of the public
have been exposed to the applied-for mark as a surname. But even if we assume that
the surname has had limited public exposure, there is no persuasive evidence that
THACKER has a recognized different, and more significant, “‘ordinary language
meaning’,” Adlon, 120 USPQ2d at 1724, and “Applicant has failed to demonstrate
that the term has another significance that is its primary significance as perceived
by the public.” Id. We thus find that THACKER is “primarily merely a surname”
within the meaning of Section 2(e)(4) of the Trademark Act and is ineligible for
registration on the Principal Register in the absence of a showing of acquired
distinctiveness.
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Decision: The refusal to register is affirmed.