J. J. Yeley

Trademark Trial and Appeal Board

Oct 17, 2007

No. 78489186 (T.T.A.B. Oct. 17, 2007)

Mailed:
October 17, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re J. J. Yeley
________

Serial No. 78489186
_______

Karl S. Sawyer, Jr. of Kennedy Covington Lobell & Hickman,
LLP for J. J. Yeley.

Naakwama Ankrah, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

This appeal from the final refusal of the Trademark
Examining Attorney involves Section 2(e)(4) of the
Trademark Act of 1946, 15 U.S.C. §1052(e)(4), which
precludes registration of a mark that is “primarily merely
a surname.” J. J. Yeley seeks to register his name, J. J.
YELEY, in standard character form, for a wide variety of
goods in Classes 6, 9, 10, 14, 16, 18, 20, 21, 24, 25, 27,
and 28 (Serial No. 78489186), based on applicant’s bona
fide intent to use the mark in commerce under Section 1(b)
of the Trademark Act of 1946, 15 U.S.C. §1052(b).
THIS OPINION IS A PRECEDENT
OF THE T.T.A.B.
Serial No. 78489186
2
The statute provides that registration should be
refused if the proposed mark is “primarily merely a
surname.” “Merely” is synonymous with “only,” and
“primarily” refers to “first in order” or “fundamentally.”
Thus, we must determine whether J. J. YELEY is
fundamentally only a surname. In re I. Lewis Cigar Mfg.
Co., 205 F.2d 204, 98 USPQ 265, 267 (CCPA 1953). We must
consider the mark as a whole and determine whether the
addition of the initials “J. J.” to “Yeley” results in a
mark that is primarily merely a surname. It “is that
impact or impression [how the mark is used] which should be
evaluated in determining whether or not the primary
significance of a word when applied to a product is a
surname significance. If it is, and it is only that, then
it is primarily merely a surname.” In re Harris-Intertype
Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975),
quoting, Ex parte Rivera Watch Corp., 106 UPSQ 145, 149
(Comm’r 1955). In other words, we must determine the
primary significance of J. J. YELEY to the purchasing
public. Michael S. Sachs Inc. v. Cordon Art B.V., 56
USPQ2d 1132, 1136 (TTAB 2000).
The determination of whether the primary significance
of the designation at issue is that of a surname is based
on the facts made of record. In re Etablissements Darty et
Serial No. 78489186
3
Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985). The
Examining Attorney has the initial burden to make a prima
facie showing of surname significance. Id. If the
Examining Attorney makes that showing, then we must weigh
all of the evidence from the examining attorney and the
applicant to determine ultimately whether the mark is
primarily merely a surname. In re Sava Research Corp., 32
USPQ2d 1380, 1381 (TTAB 1994). If there is any doubt, we
must resolve the doubt in favor of applicant. In re
Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995).
In Benthin, the Board identified five factors, four of
which are relevant here, to consider in determining whether
a mark is primarily merely a surname:
1. The degree of the surname’s “rareness”;

2. Whether anyone connected with the applicant has
the involved term as a surname;

3. Whether the mark has any recognized meaning other
than as a surname; and,

4. Whether the mark has the “look and sound” of a
surname.

Id. Because J. J. YELEY is in standard character form, we
need not consider the fifth Benthin factor here, that is,
whether the manner in which the mark is displayed might
negate any surname significance.

Serial No. 78489186
4
1. Rareness
The Examining Attorney submitted the results from a
nationwide LexisNexis phone directory with 147 “Yeley”
listings, and the first ten listings (from what appears to
be 178 total listings) for “Yeley” from the website
Ancestry.com purportedly derived from the 1930 United
States census.1 “It is the examiner’s position that the 147
listings for YELEY in the LEXIS/NEXIS database and the
various online databases of record, overwhelmingly
establishes the significance of YELEY as a surname to the
American purchasing public . . . Therefore, . . . the
frequency with which YELEY is used as a surname is not rare
in this case.”2 While the Examining Attorney did not
provide any information regarding the size of the
LEXIS/NEXIS database, it is a nationwide database, and
these were the only Yeley listings found. As a result, on
this record, we conclude that Yeley is a rare surname. In
reaching this conclusion, we rely on the fact that only 147
examples of the Yeley surname were located from a directory

1 The Examining Attorney also submitted a web page for the Yeley
surname genealogy search from the Surname Web website
(surnameweb.org). This web page provides information regarding
how to obtain information about the Yeley surname, but no
information regarding the Yeley surname. Accordingly, we have
not given this exhibit any consideration in our determination of
whether J. J. YELEY is primarily merely a surname.
2 Examining Attorney’s Appeal Brief, pp. 4-5.
Serial No. 78489186
5
purportedly of the entire United States. See In re Sava
Research Corp., supra; In re Garan Inc., 3 USPQ2d 1537,
1540 (TTAB 1987).
2. Applicant’s surname use and meaning other than as a
surname.

Applicant’s name is J. J. Yeley, and this is the mark
sought to be registered. Accordingly, the Examining
Attorney contends that applicant has conceded that J. J.
YELEY “is a full name and as such, the name ‘Yeley’ is a
surname of the applicant”;3 that “[t]he addition of an
initial or initials to a surname does not diminish the
surname significance of the term, and may, in fact,
emphasize the primary surname significance of the term”4;
and that there is no evidence that “Yeley” has any meaning
other than as a surname.5
On the other hand, applicant argues that the
designation J. J. YELEY has significance as identifying
applicant himself, a well-known NASCAR race driver and,
therefore, the designation at issue is recognized as a full
name rather than just a surname.6 Applicant submitted a
declaration in which he attested to the following:
1. “NASCAR racing has grown phenomenally over recent
years”;

3 Examining Attorney Appeal Brief, p. 4.
4 Examining Attorney Appeal Brief, p. 6.
5 Examining Attorney Appeal Brief, p. 6.
6 Applicant’s Brief, p. 6.
Serial No. 78489186
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2. Applicant markets his products identified by the
J. J. YELEY mark primarily to NASCAR and other
automobile racing fans;

3. In 2004 and 2005, applicant participated in over
45 races;

4. The races were televised nationally;

5. The televised races had over 4.5 million viewers;

6. Applicant was featured in a nationally televised
advertising campaign for MBNA from February to
May 2005;

7. NASCAR racing fans are among the most brand-
conscious and brand-loyal of all consumer groups;

8. “To varying extents, virtually every driver and
race team participating in NASCAR automobile
racing currently makes a concerted effort to
market and sell merchandise, all of which
directly competes with Applicant’s merchandise”;
and,

9. “As a result of all of the foregoing, commercial
usage of the mark and the Applicant’s popularity
among NASCAR racing fans, the mark has come to be
widely recognized by NASCAR racing fans and, more
generally, among consumers of companies which
sponsor NASCAR racing events and racing cars, and
among the general public.”7

It is common knowledge that stock car racing has
become one of the most popular spectator sports in the
United States and that as such, many of its participating
drivers have become well-known personalities to fans.
Thus, based on applicant’s declaration, we are convinced

7 Declaration of J. J. Yeley attached to applicant’s October 25,
2005 Response.
Serial No. 78489186
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that the primary significance of J. J. YELEY is the race
car driver, and this primary significance outweighs the
surname significance.8 In other words, applicant’s
initials, “J. J.” do not reinforce the surname “Yeley”;
rather, the mark in its entirety conveys the impression
that it is a personal name. See Michael S. Sachs Inc. v.
Cordon Art B.V., supra.
3. Look and sound of a surname.

Lastly, we consider whether J. J. YELEY has the “look
and sound” of a surname. As to this factor, the Examining
Attorney argues that “consumers are accustomed to seeing
and hearing the term YELEY in the context of a surname.
Thus, the term YELEY has the ‘look and sound’ of a surname

8 During the prosecution of the application, applicant claimed
that the mark J. J. YELEY had acquired distinctiveness.
Applicant supported its claim of acquired distinctiveness with J.
J. Yeley’s declaration. The Examining Attorney did not accept
applicant’s claim of acquired distinctiveness, and applicant did
not appeal that refusal. Although the declaration was submitted
to demonstrate that the mark J. J. YELEY had acquired
distinctiveness, we are not determining the issue of acquired
distinctiveness. Rather, we are analyzing the primary
significance of J. J. YELEY; specifically, whether the addition
of the initials reinforces surname significance or points to a
specific individual. The declaration provides sufficient
evidence to persuade us that the public has been exposed to the
person J. J. YELEY, as opposed to the J. J. YELEY mark, and that
because the products will be marketed to NASCAR fans, those
potential consumers will recognize J. J. YELEY as a race car
driver. We find that the evidence in the declaration is
sufficient to establish that the primary significance of J. J.
YELEY refers to a specific individual, and it is not primarily
merely a surname. In other words, the initials do not reinforce
surname significance.
Serial No. 78489186
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simply because consumers are accustomed to seeing and
hearing this term as a surname and it is the surname of the
applicant.”9
This is a decidedly subjective factor based on whether
prospective consumers would perceive J. J. YELEY to be a
personal name or a surname. A surname is a “family name”
as opposed to a given name.10 The fact that the designation
at issue is a combination of applicant’s initials and
surname (which he claims constitute his personal name)
tends to show that consumers would perceive J. J. YELEY as
indicating a personal name, not primarily merely a surname.
See Michael S. Sachs Inc. v. Cordon Art B.V., supra (“The
mark M.C. ESCHER would no more be perceived as primarily
merely a surname than the personal names P.T. Barnum, T.S.
Eliot, O.J. Simpson, I.M. Pei and Y.A. Tittle”). In this
regard, we note that a segment of American society uses
euphonic or pleasant-sounding initials rather than given
names.11 Examples include: e. e. cummings, H. L. Mencken,

9 Examining Attorney Brief, p. 6.
10 Dictionary.com Unabridged (v 1.1) based on the Random House
Unabridged Dictionary (2006). The Board may take judicial notice
of dictionary definitions. 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).
11 The Little Giant Encyclopedia of Names, p. 20 (1999; What’s In
A Name? . . . Everything You Wanted To Know, pp. 75-76 (1989).
The Board may take judicial notice of dictionaries and standard
reference works. B.V.D. Licensing Corp. v. Body Action Design
Inc., 846 F.2d 727, 6 UPSQ2d 1719, 1721 (Fed. Cir. 1988)
Serial No. 78489186
9
W. C. Fields, P. T. Barnum, H. R. Haldeman, H. L. Hunt, J.
P. Morgan, J. C. Penney, J. D. Salinger, E. G. Marshall, K.
D. Lang, C. C. Sabathia, and P. J. Carlesimo.
In sum, based on the record in this case, we find that
“Yeley” is a rare surname and that the designation at
issue, J. J. YELEY, has significance as the race car
driver and has the “look and sound” of a personal name, not
a surname. Accordingly, we conclude that J. J. YELEY is
not primarily merely a surname. Furthermore, as noted
above, we must resolve any doubt in favor of applicant. In
re Benthin Management GmbH, supra.
In reaching this decision we are mindful of the
decision of the predecessor to our primary reviewing court
that the use of a first name initial followed by a surname
reinforces, rather than diminishes, the surname
significance of a term. In re I. Lewis Cigar Mfg. Co.,
supra (S. SEIDENBERG & CO.’S is primarily merely a
surname). See also, In re Sears, Roebuck & Co., 87 USPQ
400 (Comr. Pats. 1950), aff’d, 204 F.2d 32, 96 USPQ 360 (CA
DC 1953) (J.C. HIGGINS is primarily merely a surname).
These decisions are based on the premise that if the
surname is unduly emphasized or otherwise constitutes the

(dictionary definitions and encyclopedias); Sprague Electric Co.
Electrical Utilities Co., 209 USPQ 88, 95 n.3 (TTAB 1980)
Serial No. 78489186
10
only significant part of the mark, the addition of initials
will not change the character of the mark as being
primarily merely a surname. In re Sears, Roebuck & Co., 96
UPSQ at 362. See also Ex parte Dallioux, 83 USPQ 262, 263
(Comr. Pats. 1949) (ANDRE DALLIOUX would not be registrable
if the surname were unduly emphasized or otherwise
constituted the only significant part of the mark).12
In Sears, Roebuck, the district court found that the
mark J C HIGGINS “has as its foundation only the surname
HIGGINS” (which the court found was not a rare surname) and
it is “clearly dominated thereby.” In re Sears, Roebuck &
Co., 96 USPQ at 361. The finding of fact was that the
primary significance of the mark was as a surname.13 In
Lewis Cigar Mfg., the CCPA held that under the facts
presented therein, the addition of a single initial to the
SEIDENBERG surname was not sufficient to remove the mark

(standard reference works). Moreover, we take judicial notice
that some persons use initials in lieu of a given name.
12 The Commissioner specifically noted that the prohibition
against registering the name of an individual is no longer the
law. 96 USPQ at 263.
13 The appeals court noted that the district court ruled as a
matter of law, without regard to the evidence offered to show
that purchasers and customers considered the initials
significant. It further noted that the evidence proffered by
applicant would not persuade the court to reverse the decision.
In re Sears, Roebuck & Co., 96 UPSQ at 361 n.3. However, the
appellate court did not rule as a matter of law that initials
added to a surname cannot alter the significance of a surname for
purposes of determining whether that mark is primarily merely a
surname, or may be primarily something else (i.e., a personal
name).
Serial No. 78489186
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from surname status. In re I. Lewis Cigar Mfg. Co., 98
USPQ 267. In neither case was there any discussion of
evidence indicating that the names J C Higgins or S.
Seidenberg identified any particular individuals and,
therefore, under the facts of those cases, the addition of
initials to a surname served only to reinforce the surname
significance of the marks at issue.
However, there is no per se rule that the addition of
an initial(s) to a surname means that the mark is
automatically primarily merely a surname. It depends on
the principal or ordinary significance of the term, and
that is a question of fact.
The question of whether or not a term
is primarily merely a surname within
the meaning of Section 2(e)(3) [now
Section 2(e)(4)] depends on what is
perceived by purchasers to be its
primary significance. [Internal
citation omitted]. To be more
specific, if the principal or ordinary
significance of the term is that of a
surname, it is prohibited from
registration. On the other hand, if
there is a readily recognized meaning
of the term apart from trademark
significance, registration should be
granted.

In re Piquet, 5 USPQ2d 1367 (TTAB 1987). See also, In re
Etablissements Darty et Fils, 225 USPQ at 653 (“with
respect to issues of fact, no precedential value can be
given to the quantum of evidence apparently accepted in a
Serial No. 78489186
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prior case”); In re Taverniti, SARL, 225 USPQ 1263, 1264
(TTAB 1985) (“we must decide the issue presented herein by
considering all of the relevant facts and circumstances
peculiar to this case”); TMEP §1211 (“Each case must be
decided on its own facts, based upon the evidence in the
record”). In this application, the record convinces us
that the primary significance of J. J. YELEY is a personal
name and the identity of the race car driver.
Decision: The refusal to register applicant’s mark on
the ground that it is primarily merely a surname is
reversed.