Hoskie Co Inc

Trademark Trial and Appeal Board

Aug 23, 2017

No. 86758231 (T.T.A.B. Aug. 23, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 23, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Hoskie Co Inc
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Serial No. 86758231
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Lydia Mann of Lydia Mann & Associates, PLLC
for Hoskie Co Inc.

Tina Brown, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
_______

Before Cataldo, Masiello, and Coggins,
Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
Hoskie Co Inc (“Applicant”) filed an application to register on the Principal Register
the mark HOSKIE (in standard characters) for “Export and import agencies in the
field of seafood and food products,” in International Class 35.1
The Trademark Examining Attorney refused registration under Section 2(e)(4) of
the Trademark Act, 15 U.S.C. § 1052(e)(4), on the ground that the mark is primarily

1 Application Serial No. 86758231, filed September 16, 2015 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intention to use
the mark in commerce.
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merely a surname. When the refusal was made final, Applicant appealed to this
Board. Applicant and the Examining Attorney have filed briefs.
Section 2(e)(4) of Trademark Act precludes registration of a mark which is
“primarily merely a surname” on the Principal Register without a showing of
acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f). “The test
for determining whether a mark is primarily merely a surname is the primary
significance of the mark as a whole to the purchasing public.” In re Hutchinson Tech.
Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988). See also In re
Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985) and In
re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421, 422 (CCPA 1975).
In any evaluation of whether a proposed mark is primarily merely a surname, we
consider evidence as to whether “it is also a word having ordinary language meaning”
since “[t]he language meaning is likely to be the primary meaning to the public.”
Etablissements Darty, 225 USPQ at 653. We also consider – if there is evidence to so
indicate – whether the public may perceive the mark to be primarily a meaningless,
coined term. In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1719 (TTAB
2016). The Board’s oft-cited “Benthin factors” are examples of inquiries that may lead
to evidence regarding the purchasing public’s perception of a term’s primary
significance. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995).
In order to show that HOSKIE is, in fact, a surname, the Examining Attorney has
submitted evidence from the LexisNexis Public Records Surname database,2 which

2 Office Action of January 4, 2016 at 5-23.
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includes 376 entries for persons having the surname HOSKIE, identified by name,
address and telephone number. Some of the entries are, necessarily, duplicative. The
entries show addresses in 24 States. The Examining Attorney has also made of record
excerpts of 23 news items that refer to persons bearing the surname HOSKIE;3 three
websites of persons named HOSKIE advertising their goods or services (Roberta
Hoskie (educator), Guy Hoskie (Jeweler), and Shirley Hoskie (physical plant
administrator));4 and an online obituary announcement for Mary Hoskie.5
To show that HOSKIE has no other apparent meaning, the Examining Attorney
has submitted “negative dictionary” evidence, that is, evidence showing that the term
HOSKIE cannot be found in the dictionaries at ,
,6 and .7 She has also submitted
the result of an electronic “place name” search of THE COLUMBIA GAZETTEER OF THE
WORLD, showing that HOSKIE does not appear therein.8
The Examining Attorney’s evidence is sufficient to show that HOSKIE is a surname
in use by a number of individuals in the United States. The evidence of news coverage
of persons named HOSKIE demonstrates that the public has been exposed to the use
of HOSKIE as a surname, which necessarily supports the Examining Attorney’s
position that surname significance is the primary significance of this term to the
United States public. The negative dictionary and gazetteer evidence is sufficient to

3 Office Action of July 26, 2016 at 28-33.
4 Id. at 12-25.
5 Id. at 26-7.
6 Id. at 36-39.
7 Office Action of January 4, 2016 at 25.
8 Id. at 27.
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show that there is no other apparent meaning of the term, either as a word or as a
geographic place name.
Applicant suggests (but does not argue vigorously) that HOSKIE may be regarded
as a rare surname.9 There is no requirement that the Examining Attorney
demonstrate that the surname in question is not rare. The issue to be determined is
whether the public would perceive the surname significance as the proposed mark’s
primary significance, not whether the surname is rarely encountered. In re Adlon,
120 USPQ2d at 1721. “[E]ven a rare surname is unregistrable if its primary
significance to purchasers is a surname.” In re Eximius Coffee, LLC, 120 USPQ2d
1276, 1281 (TTAB 2016).
Applicant points out that “[t]here is no evidence of record that would suggest that
[HOSKIE] is the surname of anyone connected to the Application.”10 However, the
absence of any person named HOSKIE in Applicant’s organization does not, in itself,
reduce the likelihood that the public would perceive the mark as a surname. In re
Adlon, 120 USPQ2d at 1724. To the contrary, if a person named HOSKIE were
associated with Applicant’s business and that association were promoted to the
public, it would enhance the public’s perception of the term as a surname. See In re
Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016).
Applicant argues that “HOSKIE simply lacks the look and feel of a surname,”
saying that “even in the absence of non-surname significance, a reasonable
application of the ‘primary significance to the purchasing public’ test could result in

9 Applicant’s brief at 6, 5 TTABVUE 7.
10 Id. at 5, 5 TTABVUE 6.
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a finding that the surname, when used as a mark, would be perceived as arbitrary or
fanciful.”11 Applicant’s contention is not supported by any evidence of record.12 By
contrast, the Examining Attorney has sought to show that HOSKIE does have the
“structure and pronunciation” of a surname by presenting evidence from the
LexisNexis surname database showing 302 entries for the slightly different surname
HOSKEY13 and 312 entries for the surname KOSKIE.14 Although it is very difficult
to demonstrate that members of the public would – or would not – perceive the
structure and sound of HOSKIE as similar to the structure and sound of other known
surnames, the Examining Attorney’s evidence begins to tilt the balance in the
direction of a finding of similarity and clearly preponderates over the mere argument
of Applicant’s attorney in Applicant’s brief.
The Examining Attorney’s evidence demonstrates that HOSKIE is an actual
surname and apparently has no other meaning. The evidence showing ways in which
the public has been exposed to the use of HOSKIE as a surname of particular people
further indicates that the primary and only significance of HOSKIE to which the
public has been exposed is surname significance. Applicant has adduced no evidence
to demonstrate otherwise. In the face of such a showing, some objective
countervailing evidence is required to avoid a finding that the public would perceive
the mark as primarily merely a surname. We find, therefore, that HOSKIE is

11 Id. at 6, 5 TTABVUE 7.
12 Indeed, Applicant submitted no evidence in support of any of its arguments.
13 Office Action of July 26, 2016 at 46-61.
14 Id. at 63-78.
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primarily merely a surname and that the refusal to register the mark must be
affirmed.
Decision: The refusal to register is AFFIRMED.