Hartz & Co., Inc.

Trademark Trial and Appeal Board

Jan 13, 1998

No. 74646137 (T.T.A.B. Jan. 13, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
JAN 13, 98
Paper No. 16
JQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hartz & Company, Inc.
________
Serial No. 74/646,137
_______
Herbert Cohen of Wigman, Cohen, Leitner & Myers for
applicant.
Jeffrey J. Look, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Simms, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Hartz & Company, Inc.
to register the mark LANHAM for “men’s clothing and
formalwear, namely, shirts, pants, suits, hats, jackets,
coats, shorts, sweaters, vests, ties, and rainwear.”1
The Trademark Examining Attorney has refused
registration under Section 2(e)(4) of the Act on the ground
that the applied-for mark is primarily merely a surname.
Ser No. 74/646,137
2
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs.2 We
affirm the refusal to register.
Whether a mark is primarily merely a surname depends
upon whether its primary significance to the purchasing
public is that of a surname. In re Hutchinson Technology,
Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988). The
Office has the burden of establishing 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
(Fed. Cir. 1985). Provided that the Examining Attorney
establishes a prima facie case, the burden shifts to the
applicant to rebut the showing made by the Examining
Attorney. In re Harris-Intertype Corp., 518 F.2d 629, 186
USPQ 238, 239-40 (CCPA 1975). The Board, in the past, has
taken into account various factual considerations in making
a determination whether a mark is proscribed by Section
2(e)(4). In re Benthin Management GmbH, 37 USPQ2d 1332
(TTAB 1995).
With respect to the surname significance of LANHAM, the
Examining Attorney has made of record printouts retrieved

1 Application Serial No. 74/646,137, filed March 13, 1995,
alleging a bona fide intention to use the mark in commerce.
2 Applicant originally requested an oral hearing. However, the
request subsequently was withdrawn.
Ser No. 74/646,137
3
from the PHONEDISC U.S.A. database (1994 edition).3 This
evidence shows listings for almost 3,300 individuals having
the surname “Lanham.” This situation is to be contrasted
with the ones found in In re Sava Research Corp., 32 USPQ2d
1380 (TTAB 1994) and In re Benthin Management GmbH, supra,
wherein the listings in each instance numbered only about
100 individuals. To the extent that applicant would have us
conclude that “Lanham” is an uncommon surname, we would
point out that even such surnames are not registrable on the
Principal Register. In re Industrie Pirelli per Azioni, 9
USPQ2d 1564 (TTAB 1988), aff’d unpublished decision, No. 89-
1231 (Fed. Cir. July 17, 1989). As stated in the past,
there is no minimum or “magic” number of directory listings
required to establish a prima facie case for refusal of
registration under Section 2(e)(4). In re Cazes, 21 USPQ2d
1796 (TTAB 1991).4
In addition to the telephone directory listings, the
Examining Attorney submitted a “representative sample” of
slightly over 2,600 excerpts retrieved from the NEXIS
database. The excerpts show instances where “Lanham” has

3 The preface to the PHONEDISC U.S.A. database states that the
database consists of listings “gathered from approximately 5,000
U.S. address lists and telephone directories including a total of
76,000,000 listings.”
4 In this connection, we see no reason to engage in the
mathematical analysis, comparing the commonness of Lanham with
the surnames Smith, Jones or Lopez, conducted by applicant and
the Examining Attorney.
Ser No. 74/646,137
4
appeared as a surname. Although there is no way of knowing
the circulation figures for the involved printed
publications, it is obvious that the public, to some extent,
has been exposed to this surname use.
In considering the NEXIS evidence, we recognize, as
applicant is quick to point out, that the excerpts show that
the term “Lanham” has some geographic meaning. It is true
that a minority of the articles make reference to “Lanham”
as a geographical place in Maryland. However, most of these
references appear in publications originating in the
Washington, D.C./Baltimore, MD metropolitan area.
Further, the Examining Attorney introduced excerpts
from Webster’s New Geographical Dictionary (1988), Webster’s
II New Riverside University Dictionary (1988) and Webster’s
New World Dictionary (1988). The term “Lanham” does not
appear in any of these publications. In American Places
Dictionary (1994), the only reference is to “Lanham-
Seabrook” (in Prince George’s County, Maryland), covering an
area of 5.2 square miles with a population of 16,792
(1990).5

5 To the extent that any of the materials were submitted for the
first time with the appeal brief (see Trademark Rule 2.142(d)),
we are able to take judicial notice of this evidence. University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594 (TTAB 1982), aff’d 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 74/646,137
5
In view of the evidence on this point, we agree with
the Examining Attorney’s assessment that “Lanham” is “a
small and relatively obscure suburb of Washington, D.C.” and
that the obscurity greatly diminishes the likelihood that
persons will perceive the term as geographic, especially
outside of the Washington/Baltimore metropolitan area.
Although applicant is a Maryland corporation, there is no
persuasive evidence of record that would indicate any
significant consumer recognition of and association between
“Lanham” and the geographic location of Lanham, Maryland.
In any event, “unless there is a readily recognized meaning
for a term apart from its surname significance, the fact
that other meanings for the term exist does not necessarily
indicate that the term would have a primary meaning to the
purchasing public other than that of its ordinary surname
significance.” In re Hamilton Pharmaceuticals Ltd., 27
USPQ2d 1939, 1942 (TTAB 1993).
We also have considered applicant’s argument that the
term would be perceived as the name of the federal trademark
statute. We again agree with the Examining Attorney’s
assessment of this contention: “. . .to the vast majority
of American consumers of clothing goods, the commercial
impression of the mark is not likely to call to mind the
trademark statute unless they happen to be involved in
intellectual property law. Even if someone did not know the
Ser No. 74/646,137
6
name of the Trademark Act, the act itself was named after
the surname of the congressman who was the primary author of
the act [Fritz Garland Lanham of Texas].” [emphasis in
original]
We note, of course, applicant’s assertion that “Lanham”
is not the surname of anyone connected with applicant.
Although we have considered this factor and find that the
factor weighs in applicant’s favor, we view it to be less
probative than the other objective factors.
This brings us to a decidedly subjective factor, that
is, whether “Lanham” has the “look and feel” of a surname.
In re Industrie Pirelli per Azioni, supra at 1566; and In re
Sava Research Corp., supra at 1381. Simply put, we find
that “Lanham” has the look and sound of a surname.
Since applicant has failed to sufficiently set forth
persuasive evidence or arguments to rebut the prima facie
showing by the Examining Attorney, we conclude that LANHAM
is primarily merely a surname under Section 2(e)(4) of the
Act.
Decision: The refusal to register is affirmed.
R. L. Simms
E. W. Hanak
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
Ser No. 74/646,137
7
and Appeal Board
Ser No. 74/646,137
8