IMH Columbia, LLC

Trademark Trial and Appeal Board

Nov 17, 2020

88094045 (T.T.A.B. Nov. 17, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: November 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re IMH Columbia, LLC
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Serial No. 88094045
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David V. Radack and Jenna P. Torres of Eckert Seamans Cherin & Mellott, LLC,
for IMH Columbia, LLC.
Brian Pino, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Kuhlke, Wellington, and Lykos,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
IMH Columbia, LLC (“Applicant”) seeks registration on the Principal Register of
the standard character mark THE MERRIWEATHER for “hotel services” in
International Class 43.1

1 Application Serial No. 88094045, filed on August 27, 2018, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
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The Trademark Examining Attorney has refused registration on the ground that
Applicant’s mark is primarily merely a surname under Section 2(e)(4) of the
Trademark Act, 15 U.S.C. § 1052(e)(4).
After the refusal was made final, Applicant appealed to this Board. The
application was subsequently remanded twice by the Board, upon requests of
Applicant, for further examination. Applicant also requested reconsideration on two
occasions.2 In response to the first request for reconsideration, the Examining
Attorney withdrew a Section 2(d) likelihood of confusion refusal based on a
registration for the mark MERRIWEATHER;3 however, the Examining Attorney
maintained the surname refusal. After the Examining Attorney denied the second
request for reconsideration, maintaining the finality of the surname refusal, the
Board resumed proceedings and allowed Applicant to file a supplemental brief, which
it did. The appeal is fully briefed, including a reply brief from Applicant.
We reverse the refusal.

2 4 TTABVUE (first request for reconsideration) and 8 TTABVUE (second request for
reconsideration).
3 Applicant, with its first request for reconsideration, attached a copy of a signed “Coexistence
and Consent Agreement,” between itself and the owner of the cited registration, whereby the
owner agreed to, inter alia, Applicant’s registration of the involved mark. 4 TTABVUE 4-8.
The cited registration (No. 4839304) is for a standard character mark on the Principal
Register, without a claim of acquired distinctiveness, and covers “entertainment services,
namely, providing a facility for musical concerts . . .” (copy of registration attached at TSDR
Office Action issued on December 13, 2018, p. 43).
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Evidentiary Objections
The Examining Attorney objects to evidence Applicant attached to its initial brief
and evidence attached to Applicant’s supplemental brief on the basis that said
evidence was “not already of record prior to appeal.”4
With respect to the evidence attached to Applicant’s initial appeal brief, we note
that this same evidence was submitted with Applicant’s request for remand for
consideration of that evidence.5 The request was granted and the application file was
remanded to the Examining Attorney for consideration of “the additional evidence,”
which the Examining Attorney did before this appeal proceeding resumed.6
Accordingly, the evidence attached to Applicant’s initial brief is of record, has been
considered, and the Examining Attorney’s objection thereto is moot.
Although the evidence attached to Applicant’s initial brief is of record, we hasten
to add that it was unnecessary for Applicant to attach any evidence to its brief. In re
Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015) (practice of attaching to
appeal brief copies of the same exhibits submitted with responses is discouraged); In
re SL&E Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB 2008) (attaching
exhibits to brief of material already of record only adds to the bulk of the file, and
requires Board to determine whether attachments had been properly made of record).
The better and preferred practice is citation to the record. See TRADEMARK TRIAL AND

4 17 TTABVUE 3.
5 8 TTABVUE (Applicant’s request for remand) and 9 TTABVUE (Applicant’s initial appeal
brief).
6 10 TTABVUE 1-2 and 13 TTABVUE 3 (Examining Attorney, in denying the request for
reconsideration, states “the applicant’s additional evidence is not compelling.”).
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APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1203.01 (2020) (“When referring to
the record, the applicant and examining attorney should cite to the prosecution
history for the application, currently the TSDR database.”).
With respect to the objection to the evidence submitted for the first time with
Applicant’s supplemental brief, Applicant asks the Board to take judicial notice of
some of the materials because they derive from the U.S. Census website containing
data regarding the 2010 census.7 The Board may take judicial notice of the U.S.
Census reports and we agree to do so here – the U.S. Census materials attached to
Applicant’s supplemental brief are considered. See In re Highlights for Children, Inc.,
118 USPQ2d 1268, 1271 n.7 (TTAB 2016).
As to the other materials attached to its supplemental brief, Applicant asserts
these are “updated” versions of the materials submitted with its request for remand.8
However, in response to the Examining Attorney’s objection to them, Applicant does

7 18 TTABVUE 5. Applicant refers to the materials it attached to its supplemental brief at
15 TTABVUE 12-16. In particular, Applicant attached a page identifying the U.S. Census
website address it accessed, the date accessed, a page from the website showing a link to a
Microsoft Excel file, and two Excel spreadsheet pages (with the last page containing
information regarding MERRIWEATHER as a surname). Applicant explained that it
provided the U.S. Census information in this manner “because of the difficulties of submitting
the entire 162,255-line Excel file with mostly irrelevant information as an exhibit.” 18
TTABVUE 9. We note the Examining Attorney objected to Applicant’s submission of two
similar Excel spreadsheet pages with its request for reconsideration filed on February 14,
2020 (8 TTABVUE 110-111) because “the spreadsheet information is not acceptable as
evidence as the source of the spreadsheet is not apparent from the evidence itself.” 13
TTABVUE 3. However, as noted, Applicant provided this information with the materials
attached to its supplemental brief and the Examining Attorney did not reassert an objection
on this basis.
8 Id. Specifically, Applicant asserts the materials submitted with its supplemental brief (15
TTABVUE 18-67) are “updated” versions of the materials submitted with its request for
remand (8 TTABVUE 59-68).
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not explain why “updated” versions were necessary. Indeed, Applicant asserts that
the original materials submitted with its request for remand remain relevant in
connection with Applicant’s arguments.9 Because these materials are untimely and,
unlike the Census data, not appropriate for judicial notice, the Examining Attorney’s
objection thereto is sustained and they are not given consideration in this appeal.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); see also In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1744 (TTAB 2018), aff’d, 777 F. App’x. 516 (Fed. Cir. 2019) (“The
evidence submitted with Applicant’s appeal brief that Applicant did not previously
submit during prosecution . . . is untimely and will not be considered.”).
In sum, the Examining Attorney’s objection to the evidence attached to Applicant’s
initial brief is moot. However, we sustain the Examining Attorney’s objection to the
evidence attached to Applicant’s supplemental brief, with the exception of the U.S.
Census data that of which the Board takes judicial notice.
Primarily Merely a Surname
A mark that is “primarily merely a surname” may not be registered on the
Principal Register unless it has acquired distinctiveness. 15 U.S.C. §§ 1052(e) and (f);
In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985).
Applicant does not argue that its proposed mark has acquired distinctiveness under
Trademark Act Section 2(f), but argues only that its proposed mark is not primarily
merely a surname.10

9 Id.
10 The involved, intent-to-use application does not include a claim of acquired distinctiveness
under Trademark Act Section 2(f), 15 U.S.C. § 1052(f), nor a request for registration on the
Serial No. 88094045
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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. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123
USPQ2d 1411, 1413 (Fed. Cir. 2017); In re Beds & Bars Ltd., 122 USPQ2d 1546, 1548
(TTAB 2017) (citing Darty, 225 USPQ at 653). In this case, because Applicant seeks
to register its mark in connection with hotel services, the relevant purchaser is any
adult from the general public.
Whether the primary significance of an applied-for mark is merely that of a
surname is a question of fact that must be resolved on a case-by-case basis. In re Olin
Corp., 124 USPQ2d 1327, 1330 (TTAB 2017). We examine the entire record to
determine the primary significance of the mark to the purchasing public. Id.; Darty,
225 USPQ at 653; Beds & Bars, 122 USPQ2d at 1548; In re Benthin Mgmt. GmbH,
37 USPQ2d 1332, 1333-34 (TTAB 1995). Over the years, the Board identified various
factors we may consider in determining whether a mark is primarily merely a
surname, including: (1) the rarity or frequency of exposure to the public of the mark
being used as a surname; (2) whether anyone connected with the applicant has the
mark as a surname; (3) whether the mark has any recognized meaning other than as
a surname; (4) whether the mark has the structure and pronunciation of a surname;
and (5) whether the manner in which the mark is displayed might negate any

Supplemental Register under Trademark Act Section 23, 15 U.S.C. § 1091. Accordingly, such
issues are not before us in this appeal. In re Weiss Watch Co., Inc., 123 USPQ2d 1200, 1201
n. 2 (TTAB 2017).
Serial No. 88094045
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surname significance.11 Id. at 1332-33; see also Weiss Watch, 123 USPQ2d 1203
(discussing initial factor in terms of “whether and to what extent [term] is
encountered as a surname.”). These factors, however, are not exhaustive or
enumerated in any particular order of importance; the Board may consider other
types of evidence that may be probative as to the public’s perception of the proposed
mark.
If there is any doubt, we must resolve the doubt in favor of the applicant. See
Benthin, 37 USPQ2d at 1334.
Consumers’ Exposure to MERRIWEATHER Used as a Surname
We first consider the degree of possible exposure to the purchasing public of
MERRIWEATHER as a surname. The 2010 U.S. Census data shows that
approximately 4,793 individuals have this surname.12 It is ranked 6989th in total
numbers as a surname in the U.S.; and, placed in context, the “proportion per 100,000
population for name [MERRIWEATHER]” is 1.62.13
In addition, the Examining Attorney submitted Internet evidence showing
“Merriweather” used as surname by individuals, including Wikipedia entries for NFL
player Mike Merriweather and pianist and singer “Big Maceo” Merriweather, and a

11 With respect to the last listed factor, because Applicant’s proposed mark is in standard
character format, it cannot be argued that the mark is being displayed in any particular
manner that may negate surname significance. See In re Yeley, 85 USPQ2d 1150, 1151 (TTAB
2007). Accordingly, this factor is not relevant to our decision.
12 TSDR Office Action issued on December 13, 2018, at p. 154; the same information was also
submitted by Applicant with its supplemental brief (15 TTABVUE 12-16) for which we take
judicial notice, as discussed supra.
13 15 TTABVUE 16.
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Harlem Globetrotters website printout for team player “Money” Merriweather.14 The
Examining Attorney also submitted information regarding a Tennessee Williams
play “Will Mr. Merriweather Return From Memphis?” as well as copies of articles
from the LexisNexis database involving individuals with the surname
“Merriweather.”15
Applicant argues that “Merriweather” is a “rare” surname and “the relevant
purchasing public of Applicant’s hotel services has not been exposed to THE
MERRIWEATHER with any frequency as a surname, [and] is not likely to view the
mark as primarily merely a surname, particularly in connection with the services of
the application.”16
We find that the number of persons with the surname indicates it is not a common
surname. The proportion of individuals per 100,000 population indicates it is very
unlikely that the purchasing public encounter individuals with the surname.
However, as we have often pointed out, even rare surnames may be held primarily
merely surnames if the primary significance conveyed to purchasers is that of
surname. “The relevant question is not simply how frequently a surname appears,
however, but whether the purchasing public for Applicant’s services is more likely to
perceive Applicant’s proposed mark as a surname rather than as anything else.” Beds
& Bars, 122 USPQ2d at 1551 (finding BELUSHI’S to be primarily merely a surname).

14 11-13 TTABVUE (attached to Office issued on March 26, 2020).
15 Id.
16 9 TTABVUE 11-12.
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The evidence showing several individuals of some notoriety having the surname
“Merriweather” enhances the likelihood that the general public has been exposed to
this surname.
No One Associated With Applicant Has Surname MERRIWEATHER
The Examining Attorney acknowledges, “Applicant has confirmed to the
Examining Attorney that no person associated with Applicant has the surname
Merriweather.”17 Accordingly, this factor does not favor finding Applicant’s mark will
be perceived as primarily merely a surname and remains neutral in our analysis.
Any Recognized Non-Surname Meaning for MERRIWEATHER
To show that the term “Merriweather” has no recognized meaning, other than as
a surname, the Examining Attorney submitted some “negative dictionary” evidence,
i.e., printouts from a dictionary database showing that the term has no defined
meaning.18 This type of evidence may be used to demonstrate that there is no
recognized meaning to a term. See, e.g., Darty, 225 USPQ at 653; In re Eximius Coffee,
LLC, 120 USPQ2d 1276, 1278 (TTAB 2016).
Applicant, on the other hand, argues that “Merriweather (and slight variations in
spelling, including the phonetically equivalent Meriwether) is also a given name, as
in Marjorie Merriweather Post, and including the famous explorer Meriwether Lewis
(of Lewis and Clark).”19 In support, Applicant submitted printouts from the

17 9 TTABVUE 12, referencing Applicant’s response filed on April 17, 2019.
18 TSDR Office Action issued on December 13, 2018, at p. 12.
19 9 TTABVUE 9.
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Wikipedia websites with information regarding American explorer Meriwether Lewis
(“leader of the Lewis and Clark Expedition”),20 and Marjorie Merriweather Post, a
prominent American businessperson and socialite, who died in 1973.21
Applicant further argues that “Merriweather” has additional, non-surname
meanings. Specifically, Applicant asserts that the term “Merriweather” may be used
to reference the “Merriweather Post Pavilion,” an outdoor concert venue in Columbia,
Maryland, and named for Marjorie Merriweather Post.22 Applicant submitted
printouts of the first three pages from a Google Internet search engine result for the
term “merriweather,” with the vast majority of “hits” referring to the concert venue.
A few Google “hits” from the search also reference a specific font type called
“Merriweather” or “Merriweather Serif,” that was “designed by Eben Sorken at Adobe
Fonts.”23 Applicant also relies on evidence advertising a “Merriweather District,”
located in Columbia, Maryland, surrounding the Merriweather Post Pavilion and
touted as “the first high density, mixed-use neighborhood in Downtown Columbia.”24
With respect to Applicant’s contention that “Merriweather,” by itself, will be
perceived by consumers as identifying the outdoor concert venue, it argues that
“evidence to support this connection includes the fact that the owners of the music
venue have a registration for just MERRIWEATHER in connection with

20 8 TTABVUE 71-80.
21 Id. at 25-30.
22 TSDR Office Action issued on December 13, 2018, at pp. 7-9; also at 9 TTABVUE 43-49.
23 9 TTABVUE 61-62.
24 TSDR Applicant’s April 17, 2019 response, pp. 2-8.
Serial No. 88094045
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entertainment services that registered without a 2(f) claim.”25 Although this
registration, discussed supra (see Note 3), is of record, we are not privy to that
registration file history which may have included evidence not before us in this
appeal. Moreover, as the Examining Attorney has correctly pointed out, while
consistency in examination is highly desirable, it is well settled that the Board is not
bound by previous decisions of examining attorneys and applicants have no
“substantive right to consistency.” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001); see also In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB
2006); In re City of Hous., 101 USPQ2d 1534, 1542 (TTAB 2012), aff’d, 731 F.3d 1326,
108 USPQ2d 1226 (Fed. Cir. 2013). In sum, the allowance and existence of the
MERRIWEATHER registration does not dictate our decision in this appeal.
In all, the evidence shows that the term “Merriweather,” by itself, may have
multiple non-surname meanings. Particularly, the term, or its near equivalent, may
be understood as a first name given the notoriety of the American explorer
Meriwether Lewis.
Structure and Pronunciation
Whether a term has the structure and pronunciation of a surname is a “decidedly
subjective” inquiry. Eximius, 120 USPQ2d at 1280 (quoting Benthin, 37 USPQ2d at
1333). As the Board noted in In re Olin Corp., 124 USPQ2d 1327, 1332 (TTAB 2017)
Olin, “applicants and examining attorneys may submit evidence that, due to a term’s
structure or pronunciation, the public would or would not perceive it to have surname

25 15 TTABVUE 6.
Serial No. 88094045
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significance.” In general, the ‘structure and pronunciation’ factor involves whether a
term, in this case “Merriweather,” is similar or dissimilar to other surnames in
structure and pronunciation and this being probative of a likely perception (or not) of
the term as a surname. In this regard, the Examining Attorney submitted evidence
showing 10 persons with the surname “Meriweather”26 and 9 persons with the
surname “Mayweather.”27 Although “Merriweather” may be close in structure and
pronunciation to these other surnames, this evidence has little, if any, probative
value given there are so few persons shown to have these surnames.
Applicant and the Examining Attorney have also argued whether the structure
and pronunciation of Applicant’s mark, based on the addition the definite article
“the,” negates any perception that the overall mark is primarily and merely a
surname. Specifically, Applicant “emphasizes that the inclusion of the element THE
in Applicant’s mark is yet another factor . . . that diminishes any surname
significance of the mark as a whole to the relevant purchasing public, because THE
MERRIWEATHER has the look and feel of the name of a building rather than a
surname.”28 This argument takes on particular relevance because, as Applicant notes,
the meaning of THE MERRIWEATHER is determined “when considering the
relevant purchasers of Applicant’s services include those looking for hotel
accommodations.”29 In support, Applicant submitted Internet evidence showing other

26 TSDR December 13, 2018 Office Action, pp. 122-124.
27 TSDR April 29, 2019 Office Action, pp. 132-135.
28 Id. at 8.
29 15 TTABVUE 7. We note Applicant specifically argues that the relevant purchasers are
those looking for hotel accommodations “in or near Columbia, Maryland, or between
Serial No. 88094045
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hotels with names prefaced by “The,” e.g., The Ritz-Carlton, The Inn at Penn, The
Bellevue, The Edgewater Inn, The Warwick, The Plaza, The Carlyle Hotel, and The
Mark.30 Applicant also cites to In re Hutchinson Tech. Inc., 852 F.2d 552, 7 USPQ2d
1490 (Fed. Cir. 1988) (holding “a mark sought to be registered must be considered in
its entirety,” and reversing a surname refusal of HUTCHINSON TECHNOLOGY for
electrical components).
The Examining Attorney disagrees, noting that that the addition of the word “the”
in marks has generally been held to have little significance as to the mark’s overall
commercial impression and little, if any, source-identifying value.31 The Examining
Attorney argues that, in this particular case, the prefix THE in the mark “does not
change the primary perception of the surname . . . particularly when the evidence of
record shows that famous Americans have the surname MERRIWEATHER.”32
Likening “Merriweather” to other surnames -- GARCIA and EINSTEIN, he argues
that “[i]f anything, the term THE emphasizes the surname nature of the surname

Washington, D.C. and Baltimore, where the Merriweather Post Pavilion is located, and
where a new Merriweather business district is being developed.” Id. It is improper to narrow
the relevant class of prospective consumers based Applicant’s particular location because
Applicant seeks a geographically unrestricted registration of its mark. Accordingly, we must
assume Applicant will render its hotel services to all persons looking for hotel services and
not limited to one geographic region. Cf., In re Integrity Mutual Insurance Company, Inc.,
216 USPQ 895, 896 (TTAB 1982).
30 8 TTABVUE 86-108.
31 17 TTABVUE 12.
32 Id.
Serial No. 88094045
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MERRIWEATHER because it denotes a particular person with that surname, e.g.,
THE EINSTEIN, THE GARCIA, etc.”33
With regard to the Examining Attorney’s first point, the Board has long and often
found that because the word “the” is a definite article mostly used to denote a
particular object, the word generally has almost no trademark significance,
particularly in the case of a likelihood of confusion or descriptiveness analysis. See,
e.g., In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); In re The Place, Inc.,
76 USPQ2d 1467, 1468 (TTAB 2005) (definite article THE adds “no source-indicating
significance to the mark as a whole”); In re Narwood Prods., Inc., 223 USPQ 1034
(TTAB 1984); Jay-Zee, Inc. v. Hartfield-Zodys, Inc., 207 USPQ2d 269, 271-71 (TTAB
1980); United States Nat’l Bank of Oregon v. Midwest Savings and Loan Ass’n., 194
USPQ2d 232 (TTAB 1977). Nevertheless, this does not mean that we can overlook
any role the word may play in determining whether consumers will perceive
Applicant’s mark THE MERRIWEATHER as primarily merely a surname. Indeed,
as the Court of Appeals for the Federal Court instructed in Hutchinson, we must
“consider[ ] what the purchasing public would think when confronted with the mark
as a whole.” 7 USPQ2d 1492.
Here, we find the word “the” in THE MERRIWEATHER diminishes the likelihood
that a prospective purchaser of hotel services would perceive the mark as primarily
merely a surname. We disagree with the Examining Attorney’s contention that, in
this context, the mark “denotes a particular person” with the surname

33 Id.
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“Merriweather.” That is, it would be somewhat nonsensical or grammatically
improper to reference a single person by a surname and prefaced by “the,”34 without
additional explanation or reason given. Because “Merriweather” is singular and
prefaced by “the,” it is more likely the relevant public would believe the mark is
merely identifying the physical hotel. In this regard, Applicant’s evidence regarding
other hotel names prefaced by the word “the” is probative because it helps show that
consumers often encounter names of hotels or buildings that begin with the word
“the.” Put simply, the structure of the mark THE MERRIWEATHER, in the context
of an uncommon name and one with other meanings, is such that consumers may not
perceive it as primarily merely a surname.
Conclusion
Upon consideration of all of the evidence before us, and all relevant factors, this
record does not support a finding that consumers are likely to view and understand
the mark THE MERRIWEATHER, when considered in its entirety, in connection
with hotel services to be primarily merely a surname. Benthin, 37 USPQ2d at 1334
(doubt resolved in favor of applicant). We make our finding based on “Merriweather”
being a relatively uncommon surname, having several possible non-surname
meanings, including a very similar, known historical first name, and the overall mark
having a structure that, when consumers encounter Applicant’s mark THE

34 Applicant submitted evidence regarding the proper usage of the definite article “the.” 8
TTABVUE 82-84 (“Student Writing Support” from the University of Minnesota website). The
website provides that “the” should be used in situations when “family names made plural
with an ‘s’ (the Pinkers)” and with “names of most buildings or structures (the Empire State
Building).” Id. at 83.
Serial No. 88094045
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MERRIWEATHER for hotel services, they will not perceive it as primarily merely a
surname.
Decision: The refusal to register is reversed.