G R Lane Health Products Limited

Trademark Trial and Appeal Board

Jul 10, 2013

No. 85115445 (T.T.A.B. Jul. 10, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 10, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re G R Lane Health Products Limited
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Serial No. 85115445
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Jordan A. Lavine of Flaster Greenberg PC for G R Lane Health Products Limited.

Kathleen Lorenzo, Trademark Examining Attorney, Law Office 109 (Dan Vavonese,
Managing Attorney).
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Before Holtzman, Kuhlke and Hightower, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, G R Lane Health Products Limited, filed an application to register
on the Principal Register the mark JAKEMANS in standard characters for goods
ultimately identified as “medicated confectionery; medicated confectionery
containing menthol; lozenges for pharmaceutical purposes; pastilles for
pharmaceutical purposes; medicated throat pastilles, throat lozenges,” in
International Class 5, and “non-medicated lozenges; confectionary, namely,
pastilles; non-medicated throat pastilles; hard candies,” in International Class 30.1

1 Application Serial No. 85115445, filed on August 25, 2010, alleging a bona fide intention
to use the mark in commerce, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 85115445

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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 JAKEMANS is primarily
merely a surname. Applicant has appealed. Both applicant and the examining
attorney have filed briefs.
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. See In re United Distillers plc, 56 USPQ2d
1220 (TTAB 2000). The burden is on the examining attorney to establish a prima
facie case that a term is primarily merely a surname. In re Etablissements Darty et
Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985). If the examining attorney
makes that showing, then we must weigh all of the evidence from the examining
attorney and the applicant, to determine ultimately whether the mark is primarily
merely a surname. See In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB
1994). If there is any doubt, we “are inclined to resolve such doubts in favor of
applicant.” In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB
1995). Among the factors to be considered in determining whether a term is
primarily merely a surname are (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; and (4) whether the term has the
“look and sound” of a surname. Benthin, 37 USPQ2d at 1333. See also In re
Gregory, 70 USPQ2d 1792 (TTAB 2004). Because JAKEMANS is in standard
character form, we need not consider the fifth Benthin factor here, that is, whether
Serial No. 85115445

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the manner in which the mark is displayed might negate any surname significance.
In addition, the plural or possessive form of a surname does not diminish possible
surname significance. In re Luis Caballero, S.A., 223 USPQ 355, 357 (TTAB 1984)
(it “does not matter that the subject matter of the application is a plural (or
possessive) form of the name. Businesses frequently use a possessive form of their
names or marks without an apostrophe.”). See also In re Binion, 93 USPQ2d 1531,
1537 (TTAB 2009).
We first look at the “rareness” of the surname. During prosecution, the
examining attorney submitted search results from a LexisNexis nationwide
telephone directory showing 87 as the total number of listings for individuals with
the surname JAKEMAN in the United States.2 The evidence of 87 entries is not
substantial evidence that the term JAKEMAN is a common surname. In fact, it
supports the conclusion that the surname JAKEMAN is a very rare surname in the
United States. See United Distillers, 56 USPQ2d at 1221 (“Hackler” held to be a
rare surname despite 1295 listings in phone directories). Applicant argues that 87
listings represent a tiny fraction of U.S. surnames.3 Based on the evidence, we find
JAKEMAN to be an extremely rare surname.
However, the fact that a term is not a common surname does not per se mean
that a surname would not be considered to be primarily merely a surname. See In
re Adrian Giger and Thomas Giger, 78 USPQ2d 1405, 1408 (TTAB 2006). See also
In re E. Martinoni Co., 189 USPQ 589, 590 (TTAB 1975); and In re Industrie Pirelli

2 First Office Action (December 9, 2010).

3 App. Br. p. 3.
Serial No. 85115445

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Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988). The examining attorney
points out that the telephone listings are not concentrated in any one region, but
identify individuals in geographically dispersed states. In addition, the examining
attorney submitted printouts from Internet websites showing use of JAKEMAN as
a surname. The examples in the record comprise: a list of recent real estate sales
listed in the Washington Post that includes one person with the surname Jakeman;
a reference in a newswire article to the editor of the Encyclopedia of Alabama whose
surname is Jakeman; an article in the New York Times referencing a person with
the last name Jakeman; a team roster that includes someone with the surname
Jakeman; an obituary for a Jakeman from a Petersburg, Virginia paper;4 an excerpt
from a website offering “Jakeman’s” Canadian maple syrup; the website of someone
with the surname Jakeman; a faculty entry from Auburn University for the editor
of the Encyclopedia of Alabama;5 the website of a law firm with a founding attorney
with the surname Jakeman; a faculty entry from Ohio State University for a
professor with the surname Jakeman; an article in AdAge referencing the same
Jakeman discussed in the New York Times article. The examining attorney
characterizes this evidence as showing “the routine appearance of the surname in
articles and websites,” which she argues supports the contention that JAKEMAN
“is used throughout the United States and is familiar to a geographically broad
purchasing public.”6

4 The foregoing attached to the First Office Action (December 9, 2010).

5 The foregoing attached to the Second Office Action (July 20, 2011).
6 E.A. Br. p. 6.
Serial No. 85115445

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This handful of examples do not reflect the type of uses that would outweigh
the rareness of this surname to imbue it with primary surname significance. See
Gregory, 70 USPQ2d at 1795 (ROGAN primarily merely a surname based in part on
broad exposure of public to politician, athletes, actors and author with this
surname); see also Sava Research Corp., 32 USPQ2d at 1381; and In re Garan Inc.,
3 USPQ2d 1537, 1540 (TTAB 1987).
The second factor we consider is whether anyone associated with applicant
has the surname JAKEMAN or JAKEMANS. In this case, there is nothing in the
record to indicate that anyone associated with applicant has the surname
JAKEMAN or JAKEMANS.
As to the third factor, the examining attorney submitted the online search
results from the Merriam-Webster dictionary and The Columbia Gazetteer of the
World showing no entry for JAKEMAN to establish that there is no other
recognized meaning of the term JAKEMAN.7 Applicant does not dispute that there
is no recognized meaning for JAKEMAN, but argues that does not make the word
merely a surname.8
Finally, we consider whether JAKEMANS has the look and sound of a
surname. In support of her contention that JAKEMAN has the look and feel of a
surname, the examining attorney submitted: (1) search results from the LexisNexis
nationwide telephone directory showing 2365 individuals with the surname
JACKMAN; (2) a third-party registration for JACKMAN registered under Section

7 First Office Action (December 9, 2010).

8 App. Br. p. 5.
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2(f) based on acquired distinctiveness; and (3) online references to a well-known
individual, Hugh Jackman, with the surname JACKMAN and four other
individuals with the surname Jackman. The examining attorney argues that
JAKEMAN is similar in sound, appearance and structure to JACKMAN.
Applicant argues that, while JACKMAN “has gained some recognition due to
the renown of the actor Hugh Jackman, the surname Jackman does not sound like
the trademark ‘Jakemans.’” Applicant contends that its mark falls in the category
of those surnames “that are so rare that they do not even have the appearance of
surnames.”9
While it can hardly be disputed that surnames end with the suffix “man” the
same could be said for first names (e.g., Herman, Norman, Sherman). This factor is
highly subjective and based on the evidence and arguments we are unable to make
any definitive determinations as to whether applicant’s mark has the “look and
sound” of a surname, such that its primary significance is that “of a surname, or an
arbitrary term.” United Distillers, 56 USPQ2d at 1222.
Finally, the mere fact that applicant’s mark has the same structure as
another word that may have the primary significance of a surname, by itself, is not
sufficient to support the refusal in this case. See In re Joint-Stock Co. Baik, 84
USPQ2d 1921, 1924 (TTAB 2007) (Seeherman, J., concurring) (without more,
evidence of look and feel is not sufficient to support a refusal under Section 2(e)(4)).
The examining attorney points to In re Industrie Pirelli Societa per Azioni, 9
USPQ2d at 1566, noting that, in that case, there were fewer listings in telephone

9 App. Br. p. 6, citing, United Distillers plc, 56 USPQ2d 1220.
Serial No. 85115445

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directories. However, in Pirelli the second factor also fell in favor of finding the
primary significance of “Pirelli” as a surname in that it was the surname of the
applicant’s chairman of applicant’s parent group. Here, factor two does not fall in
favor of finding primary surname significance and factor one strongly weighs
against finding surname significance. As to factor three, to the extent it serves to
support surname significance, it is not sufficient to outweigh factor one.
In view of the above, we cannot say that the primary significance to the
relevant purchasing public would be solely that of a surname. United Distillers, 56
USPQ2d at 1222. In cases where the proposed mark is a very rare surname, “we
cannot assume that the purchasing public will view the mark as a surname based
on exposure to the surname use.” Joint-Stock Co. Baik (in main opinion) at 1923-
24, citing In re Garan Inc., supra at 1540. Finally, as noted above, we resolve doubt
in favor of an applicant. Benthin, 37 USPQ2d at 1334. Based on this record, we
conclude that the Office has not satisfied its burden to establish that JAKEMANS is
primarily merely a surname.
Decision: The refusal to register under Section 2(e)(4) of the Trademark Act
on the ground that it is primarily merely a surname is reversed.