Gwabboh LLC

Trademark Trial and Appeal Board

May 18, 2020

88106129 (T.T.A.B. May. 18, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 18, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Gwabboh LLC
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Serial No. 88106129
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Gwabboh LLC, pro se.

Elizabeth O’Brien, Trademark Examining Attorney, Law Office 105,
Jennifer Williston, Managing Attorney.
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Before Mermelstein, Lynch and Lebow,
Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:
Applicant, Gwabboh LLC, applied to register the mark DARBYSHIRE (in
standard characters) on the Principal Register for “audio books in the nature of short
stories” in International Class 9, “[a] series of fiction works, namely, novels and
books” in International Class 16, and “Digital on-demand printing services of books
and other documents” in International Class 40.1 Applicant appeals from the

1 Application Serial No. 88106129 was filed on September 6, 2018 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b) based on Applicant’s claim of a bona fide intent to use
the mark in commerce.

Serial No. 87911269
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Trademark Examining Attorney’s final refusal to register on the ground that
DARBYSHIRE is primarily merely a surname pursuant to Section 2(e)(4) of the
Trademark Act, 15 U.S.C. § 1052(e)(4). We reverse.
I. Applicable Law
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). “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.” In re Olin Corp., 124 USPQ2d 1327, 1330 (TTAB 2017) (citing Earnhardt
v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017)).
Whether the primary significance of a term is merely that of a surname is a
question of fact that must be resolved on a case-by-case basis, founded on the record
as a whole. In re Olin Corp., 124 USPQ2d at 1330; Azeka Bldg. Corp. v. Azeka, 122
USPQ2d 1477, 1480 (TTAB 2017). Among the circumstances that may be probative
in making this determination are: the extent to which the term is exposed to the
public as a surname; whether the term is the surname of anyone connected with the
applicant; whether the term has any recognized meaning other than as a surname;
and whether the term has the structure and pronunciation of a surname. These
factors are not exclusive, nor are they presented in order of importance; any of the
factors—singly or in combination—as well as any other relevant circumstances, may
shape the analysis in a particular case. Id.; In re Integrated Embedded, 120 USPQ2d
Serial No. 87911269
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1504, 1506 n.4 (TTAB 2016); see In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-
34 (TTAB 1995).
II. Analysis
The Examining Attorney argues that DARBYSHIRE is primarily merely a
surname based on evidence she provided regarding the public perception, third-party
use, and absence of any recognized meaning of the term other than as a surname.
Applicant argues that because DARBYSHIRE is a fanciful term, is extremely rare as
a surname, and is unconnected to Applicant, the mark should not be considered to be
primarily merely a surname.
A. Extent to Which DARBYSHIRE is Encountered as a Surname
The Examining Attorney submitted the results of four different searches for
persons with the surname DARBYSHIRE to support her argument that the public
perceives DARBYSHIRE as a surname, including:
• 573 records of persons in the United States from the LexisNexis Public
Records surname database;2

• 98 records of persons in the United States from the website
YellowPages.com;3

• 598 records of persons (1:1,927,662 ratio) in the United States from the
website Forbears.co, and

2 June 6, 2019 Final Office Action, TSDR 6. The same search conducted by the Examining
Attorney for the December 18, 2018 Office Action yielded 465 records.
Trademark Status & Document Retrieval (“TSDR”) citations refer to the docket and
electronic file database for the involved application. All citations to the TSDR database are
to the downloadable .PDF version of the documents.
3 Id. at 8-36.
Serial No. 87911269
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• 137,950 records for persons worldwide from the website
MyHeritage.com, but without a breakdown as to the number of persons
in the United States.4

Applicant does not dispute that DABRYSHIRE is a surname but argues that it is
“extremely rare” based on the roughly 500-600 persons in the United States having
that surname, according to the Examining Attorney’s evidence.
We conclude from the evidence that DARBYSHIRE is a rare surname. However,
even a rare surname is not registrable if “the purchasing public for Applicant’s [goods
and] services is more likely to perceive Applicant’s proposed mark as a surname
rather than as anything else.” In re Beds & Bars, Ltd., 122 USPQ2d 1546, 1551
(TTAB 2017); see also In re Eximius Coffee, 120 USPQ2d 1276, 1281 (TTAB 2016)
(“Section 2(e)(4) makes no distinction between rare and commonplace surnames ...
and even a rare surname is unregistrable if its primary significance to purchasers is
a surname.”) (Citations omitted).
The Examining Attorney also made of record pages from a number of websites to
support her argument that the public perceives DARBYSHIRE as primarily merely
a surname, including pages from
• HouseofNames.com, which discusses the origin and history of the name,
migration of the Darbyshire family to the New World, five Darbyshire
settlers in the United States in the 17th-19th century, and a number of
English notables having the name Darbyshire, as well as one member of
the North Dakota State House of Representatives, who is the only
American listed among the nine “Contemporary Notables of the name
Darbyshire (post 1700)”;5

4 December 18, 2018 Office Action, TSDR 7-8. We discount this last source because it does
not distinguish between persons abroad and those in the United States and therefore has
little probative value.
5 June 6, 2009 Final Office Action, TSDR 45-50.
Serial No. 87911269
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• Wikipedia.com, listing nine purportedly “notable” people in the United
Kingdom having the surname Darbyshire;6

• WillDarbyshire.com, the personal website of author Will Darbyshire,
who wrote a book that is offered for sale on Amazon;7

• Darbyshire.com, the business website of Daryshire Machine, Inc., a New
Mexico company founded by Jack Darbyshire in 1952 that produces
farming equipment;8 and

• Darbyshire.uk.com, a United Kingdom business website for a picture
framer and fine art fabricator based in London.9

Applicant argues that this evidence is not probative because these are not
commonly known websites:10
[I]t is well known that a web domain can be purchased and
a web page can be built within minutes on a builder, very
inexpensively. Furthermore, the amount of web traffic
these sites receive is unknown. Given this information, it
is highly unlikely that a few uncommonly known sites can
transform the name borne by roughly 500-600 persons in
the country into a common name.

The Examining Attorney responds that Applicant’s argument should not be
considered because “[A]pplicant did not provide evidence showing these sites are
uncommon.”11 It is, however, the Examining Attorney’s initial burden to establish a
prima facie case that an applicant’s mark is primarily merely a surname. In re

6 Id. at 51.
7 Id. at 53-54.
8 Id. at 55-56.
9 Id. at 57-60.
10 4 TTABVUE 4.
11 6 TTABVUE 6.
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Hutchinson Technology, Inc., 852 F.2d 552, 7 UPQ2d 1490, 1492 (Fed. Cir. 1988); In
re Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ 652, 653 (Fed. Cir. 1985).
Therefore, we consider these websites for whatever value they may have, balanced
against other factors being considered.
Although it is inaccurate to suggest that a surname must be a common name to
be refused registration, as Applicant does, we agree that this evidence does not suffice
to show that U.S. consumers are familiar with DARBYSHIRE as a surname. To begin
with, one would first have to be familiar with DARBYSHIRE as a surname to engage
in search for its history and origins, or to search for notable persons having that
name. Second, the evidence is inadequate to show that the “notable” persons referred
to on those websites, predominantly from the United Kingdom, are notable to the
ordinary purchaser in the United States. Third, given the nature and content of the
websites, we cannot presume that U.S. purchasers have been exposed to the several
personal and business websites listed. On this record, we find that DARBYSHIRE is
rarely encountered as a surname and is unlikely to be perceived by the public as
having surname significance.
B. Connection to Applicant as a Surname
Applicant states that DARBYSHIRE is not the surname or anyone connected to
or associated with Applicant.12 In reply, the Examining Attorney observes that this,
therefore, is a neutral factor,13 which is correct. The fact that the proposed mark is

12 4 TTABVUE 4.
13 6 TTABVUE 8.
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not the surname of someone associated with Applicant does not tend to establish one
way or the other whether the proposed mark would be perceived as a surname. In re
Piano Factory Grp. Inc., 85 USPQ2d 1522, 1524 (TTAB 2006); In re Gregory, 70
USPQ2d 1792, 1795 (TTAB 2004).
C. Recognized Meaning Other than a Surname
The Examining Attorney provided “negative dictionary” evidence, that is,
evidence showing that the term DARBYSHIRE cannot be found in THE OXFORD
DICTIONARY or THE COLUMBIA GAZETTEER OF THE WORLD,14 which Applicant does not
dispute. Accordingly, we find that DARBYSHIRE has no recognized ordinary
language meaning or significance. In re Etablissements Darty et Fils, 225 USPQ 652,
653 (Fed. Cir. 1985); Eximius Coffee, 120 USPQ2d at 1278 (citing Darty).
D. Structure and Pronunciation as a Surname
While neither the Examining Attorney nor Applicant provided evidence as to
whether DARBYSHIRE has the structure or pronunciation of a surname, we take
judicial notice of the fact that a “shire” is “an administrative subdivision especially: a
county in England”15 and is used a suffix in the names of English counties, e.g.,
Oxfordshire and Yorkshire.16 As a result, we find that DARBYSHIRE tends to evoke
a place name rather than a surname.

14 December 18, 2018 Office Action, TSDR 10-16.
15 https://www.merriam-webster.com/dictionary/shire.The Board may take judicial notice of
dictionary definitions. Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed editions.
16 https://dictionary.cambridge.org/dictionary/english/shire
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III. Conclusion
In sum, we find that the evidentiary record, as a whole, does not establish that
the primary significance of DARBYSHIRE to the purchasing public is merely that of
a surname within the meaning of Section 2(e)(4). Because we have doubts, we resolve
those doubts in Applicant’s favor. See In re Benthin Mgmt. GmbH, 37 USPQ2d at
1334.
Decision: The refusal to register under Trademark Act § 2(e)(4) is reversed.