Gantt Group, Inc.

Trademark Trial and Appeal Board

Mar 8, 2000

No. 75291852 (T.T.A.B. Mar. 8, 2000)

Paper No. 9
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 8, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re The Gantt Group, Inc.
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Serial No. 75/291,852
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Susan M. Kornfield of Bodman, Longley & Dahling LLP for The
Gantt Group, Inc.
Matthew J. Pappas, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Hohein, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On May 14, 1997 The Gantt Group, Inc. filed an
application to register the mark THE GANTT GROUP on the
Principal Register for “business consulting services in the
field of project management.” Applicant disclaimed the
term “GROUP.” Applicant asserts a date of first use of
January 2, 1995.
Ser. No. 75/291852
2
Registration has been finally refused under Section
2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4), on the
basis that the mark THE GANTT GROUP is primarily merely a
surname.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
Applicant acknowledges that the term “GANTT” is a
surname (brief, p. 5, and reply brief, p. 4), but argues
that it is not primarily merely a surname, especially in
terms of what the word means to the relevant purchasers of
applicant’s services. In support of its position,
applicant contends that in offering its business consulting
services in the field of project management it makes
extensive use of a visual tool known as a “Gantt chart”;
that the term GANTT connotes more than a surname, since “it
refers to an idea for presenting information crucial to
project management—the Gantt chart” (brief, p. 5); and that
because the term “GANTT” has acquired a meaning other than
as a surname, applicant’s mark is not primarily merely a
surname. In addition, applicant states that no person
associated with applicant has the surname GANTT.
Applicant has submitted a page from a website wherein
“Gantt chart” is defined as “a horizontal bar chart that
Ser. No. 75/291852
3
graphically displays the time relationships between the
different tasks in a project”; a definition from The
American Heritage Dictionary (2nd ed.) listing the term
“Gantt chart” as “n. A chart designed for comparing rates,
as of planned production actual production. [After Henry
Laurence Gantt (1861-1919)]”;1 and copies of three third-
party registrations, taken from the PTO trademark text and
image database for the following marks registered on the
Principal Register: QUICKGANTT, MICRO GANTT2, and GANTT-
PACK, all of which are for computer programs.3
In support of his position, the Examining Attorney has
made of record a portion of the printout from the Phonedisc
records showing 3,179 surname listings of “Gantt”; a copy
of The American Heritage Dictionary (3rd ed. 1992)
definition of the term “Gantt chart” as “noun-A chart that

1 Although applicant did not submit this dictionary definition
until it filed its brief on appeal (see Trademark Rule 2.142(d)),
the Board may take judicial notice of dictionary definitions.
See TBMP §712.01.
2 In such registration, the term “GANTT” is disclaimed.
3 Applicant listed two of the three third-party registrations in
its July 17, 1998 response to the first Office action. A party
may not make third-party registrations of record simply by
setting forth a listing thereof. See In re Duofold, Inc., 184
USPQ 638 (TTAB 1974); and TBMP §703.02(b). Applicant’s inclusion
of copies of third-party registrations with its brief on appeal
was untimely. However, although the Examining Attorney could
have objected to applicant’s third-party registrations as
proffered, he did not do so. In fact, the Examining Attorney
treated the third-party registrations as if they were of record.
Therefore, the third-party registrations referred to by applicant
have been considered by the Board.
Ser. No. 75/291852
4
depicts progress in relation to time, often used in
planning and tracking a project. [After Henry Laurence
Gantt (1861-1919), American engineer]” (emphasis in
original); a copy of a page from Webster’s New Geographical
Dictionary showing no entry for, and thus no other meaning
of, the term “Gantt”; and copies of eight third-party
registrations of marks which are surnames (e.g., HAMILTON,
CHAN, CAHILL) with at least the additional word “GROUP,”
each on the Supplemental Register and including a
disclaimer of the term “GROUP.”
The Examining Attorney argues that the term GANTT, by
itself, has no significance other than as a surname; and
that while applicant’s mark must be considered in its
entirety, GANTT is the dominant term in the mark, with both
the article “THE” and the disclaimed word “GROUP”
(indicating an entity designation) having no trademark
significance; and that the word GANTT thus remains
primarily merely a surname in the context of applicant’s
mark.
A term is primarily merely a surname if, when used in
connection with a particular service (or applied to a
particular product), its primary significance to the
purchasing public is that of a surname. The burden is on
the Patent and Trademark Office to establish a prima facie
Ser. No. 75/291852
5
case that the involved term is primarily merely a surname.
See In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ
238 (CCPA 1975); In re Kahan & Weisz Jewelry Mfg. Corp.,
508 F.2d 831, 184 USPQ 421 (CCPA 1975); and In re BDH Two
Inc., 26 USPQ2d 1556 (TTAB 1993). Further, the question of
whether the term sought to be registered is primarily
merely a surname can be resolved only on a case by case
basis. See In re Establissements Darty et Fils, 759 F.2d
15, 225 USPQ 652 (Fed. Cir. 1985). See generally, 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §§13:29 and 13:30 (4th ed. 1999).
As noted earlier, applicant does not dispute that the
term GANTT is a surname. The question before the Board,
however, is whether the mark THE GANTT GROUP is primarily
merely a surname. We find that the mark, when considered
in its entirety, and in light of the significance of the
term GANTT in relation to charts which are used, as in
applicant’s services, to track projects, is not primarily
merely a surname.
Even though the “Gantt chart” was named after an
individual with the surname “Gantt,” the name itself has
another important significance or meaning, especially in
the field of project management. Specifically, the term
“GANTT” relates to organizing information and tracking
Ser. No. 75/291852
6
projects through a specific type of chart. Thus, it cannot
be said that the primary significance to the relevant
purchasing public, i.e., purchasers and prospective
purchasers of applicant’s business consulting services in
the field of project management, would be solely that of a
surname. That is, in this case, purchasers upon seeing the
mark will recognize its independent meaning signifying or
relating to the “Gantt charts” for tracking projects. See
In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994); and
In re Colt Industries Operating Corp., 195 USPQ 75 (TTAB
1977).4
Moreover, our analysis must relate to the mark
considered in its entirety. See In re Hutchinson
Technology Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir.
1988). Here the mark is THE GANTT GROUP. While the word
“THE” is simply a common article and the word “GROUP” is a
generalized entity-type of designation (disclaimed by
applicant), nonetheless, we are of the opinion that the
relevant purchasing public, when confronted with the mark

4 Applicant’s argument regarding the level of historical
significance of Henry Gantt as the developer of the “Gantt chart”
is not persuasive in this case. See In re Hamilton
Pharmaceuticals Ltd., 27 USPQ2d 1939, footnote 12 (TTAB 1993);
and In re Champion International Corporation, 229 USPQ 550 (TTAB
1985).
Ser. No. 75/291852
7
as a whole, would not perceive it as primarily merely a
surname.
As to the third-party registrations made of record by
both the Examining Attorney and applicant, we find that
they have no probative value inasmuch as we do not have the
file history records of those registrations before us and
thus have no reliable way of knowing why the particular
registrations were allowed. See In re Harris-Intertype,
supra at 240.
Finally, to the extent there is any doubt on the
question of whether the mark would be perceived as
primarily merely a surname, we resolve such doubt in favor
of the applicant and passage of the application to
publication. See In re Benthin Management GmbH, 37 USPQ2d
1332 (TTAB 1995).
Decision: The refusal to register under Section
2(e)(4) is reversed.
G. D. Hohein
B. A. Chapman
T. E. Holtzman
Administrative Trademark Judges,
Trademark Trial and Appeal Board