Jacqueline Falcon

Trademark Trial and Appeal Board

May 10, 2017

No. 86673659 (T.T.A.B. May. 10, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 10, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Falcon
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Serial No. 86673659
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Steve Zemanick of Four Reasons Legal, LLC
for Jacqueline Falcon.
Parker Howard, Trademark Examining Attorney, Law Office 117,
Hellen Bryan Johnson, Managing Attorney.
_____

Before Kuhlke, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Jacqueline Falcon (“Applicant”) seeks registration on the Principal Register of the
mark HUSMAN in standard characters for “Hats; Long-sleeved shirts; Shirts; Sweat
shirts; T-shirts” in International Class 25.1

1 Application Serial No. 86673659, filed June 24, 2015, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
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The Trademark Examining Attorney has refused registration of Applicant’s mark
pursuant to Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4), on the
ground that the applied-for mark is primarily merely a surname.
When the refusal was made final, Applicant appealed and requested
reconsideration. The Trademark Examining Attorney maintained the refusal to
register and denied the request for reconsideration. Thereafter, the appeal resumed
and is now fully briefed. For the reasons set forth below, we affirm the refusal to
register.
Section 2(e)(4) of the Trademark Act of 1946 provides that absent a showing of
acquired distinctiveness under Section 2(f), 15 U.S.C. § 1052(f), registration on the
Principal Register must be refused if the proposed mark is “primarily merely a
surname.”2 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 Beds & Bars Ltd., __ USPQ2d __ (Ser.
No. 85597669; TTAB May 5, 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276,
1277 (TTAB 2016); In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000).
This expression of the test restates the rule set forth in In re Kahan & Weisz Jewelry
Mfg. Corp., 508 F.2d 831, 184 USPQ 421, 422 (CCPA 1975) (“[A] correct resolution of
the issue can be made only after the primary significance of the mark to the

2 “No trademark by which the goods of the applicant may be distinguished from the goods of
others shall be refused registration on the principal register on account of its nature unless
it ... (e) Consists of a mark which ... (4) is primarily merely a surname.” 15 U.S.C. § 1052.

Serial No. 86673659
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purchasing public is determined …”) and In re Etablissements Darty et Fils, 759 F.2d
15, 225 USPQ 652, 653 (Fed. Cir. 1985). In Darty, the U.S. Court of Appeals for the
Federal Circuit considered several factors in determining whether the purchasing
public would perceive a proposed mark as primarily merely a surname, including:
whether the applicant adopted a principal’s name and used it in a way that revealed
its surname significance; whether the term had a nonsurname, “ordinary language”
meaning; and the extent to which the term was used by others as a surname. 225
USPQ at 653. In contemplating Section 2(e)(4) as a bar to registration of a term, we
also consider the impact the term has or would have on the purchasing public because
“it is that impact or impression 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 USPQ 145, 149 (Comm’r Pat. 1955)). In In re Benthin
Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) (“Benthin”), the Board
identified several examples of inquiries or “factors” that may lead to evidence
regarding whether the primary significance of a term to the purchasing public is
merely as a surname.3 “However, rather than using these factors as guidelines,

3 Applicant and the Examining Attorney both cite this opinion which is entirely consistent
with the Court of Appeals for the Federal Circuit and its predecessor court and Board cases
discussed herein. In Benthin, the Board stated that factors to be considered in determining
whether a term is primarily merely a surname include (1) the degree of a surname’s rareness;
(2) whether anyone connected with applicant has that surname; (3) whether the term has
any recognized meaning other than that of a surname; (4) whether the term has the
“structure and pronunciation” of a surname; and (5) whether the stylization of lettering is
distinctive enough to create a separate commercial impression. Where, as here, the mark is
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practitioners and examining attorneys have often interpreted them with a rigidity
that is not warranted.” In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1719
(TTAB 2016). “These [Benthin] factors are not exclusive nor presented in order of
importance. We make our determination on a case-by-case basis, and any of the
Benthin factors – singly or in combination – and any other relevant circumstances
may shape the analysis in a particular case.” In re Integrated Embedded, 120
USPQ2d 1504, 1506 n.4 (TTAB 2016). For example, there may be “contextual clues”
regarding use of a proposed mark as a surname. See, e.g., Azeka Bldg. Corp. v. Azeka,
__ USPQ2d __ (Opp. No. 91218679; TTAB May 3, 2017) (use of possessive form
indicative of surname).
Whether the primary significance of an applied-for mark is merely that of a
surname is a question of fact. Darty, 225 USPQ at 653-54. This question must be
resolved on a case-by-case basis. Id. at 654.
In support of the refusal, the Examining Attorney has introduced the following
evidence:
● Search results from the surname database in Lexis.com showing 779
entries for the surname “Husman.” (September 30, 2015 Office Action).

● Search results from the Whitepages website (www.whitepages.com)
showing 940 exact matches and 26,037 possible matches for the
surname “Husman” and also referencing the surname “Husman” in
2,254 birth records, 412 death records, 371 marriage records, and 66
divorce records. (October 28, 2016 Denial of Request for
Reconsideration).

in standard characters, it is unnecessary to consider the fifth factor. In re Yeley, 85 USPQ2d
1150, 1151 (TTAB 2007).
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● Search results from the Mongabay.Com web site
(http://names.mongabay.com/data/surnames_Bh.htm) stating that
“Husman is identified by the U.S. Bureau of the Census as a surname
with more than 100 occurrences in the United States for the year-2000
Census” and showing “Husman” appearing 938 times as a surname
based on data derived from David. L. Word, Charles D. Coleman, Robert
Nunziata and Robert Kominski (2008) “Demographic Aspects of
Surnames from Census 2000” U.S. Census Bureau. (April 15, 2016
Office Action).

● Entries entitled “A.E. Houseman” and “Huisman” from Wikipedia4
purportedly to show that Applicant’s mark “Husman” is similar in
structure and pronunciation to other surnames. (September 29, 2014
Office Action).

● Search results from The Collins American English Dictionary and The
American Heritage Dictionary showing no dictionary definitions for
“husman.”

● Search results from Wikipedia showing no recognized meaning for
“husman” and showing entries regarding various individuals bearing
the surname “Husman” (Gary Husman, John Husman, and Perry
Husman).

The record does not show that Applicant or anyone associated with Applicant
bears the surname “Husman.” Nonetheless, the Examining Attorney has
demonstrated that HUSMAN is an actual surname, and that because it ends with
the suffix “-man”, it has a structure and sound similar to other surnames. The
negative dictionary evidence noted above also shows that it has no other “ordinary
language meaning.” See Darty, 225 USPQ at 653 (in evaluating whether a proposed
mark is “primarily merely a surname,” we consider whether “it is also a word having

4 In accordance with our practice, we have considered evidence obtained from Wikipedia
submitted with the Examining Attorney’s first office action since Applicant was afforded the
opportunity to rebut that evidence. See In re Swatch Group Management Services AG, 110
USPQ2d 1751, 1754 n.4 (TTAB 2014) (Board considered Wikipedia evidence submitted with
examining attorney’s first office action which applicant had an opportunity to rebut). See also
Trademark Trial and Appeal Board Manual of Procedure (“TBMP) § 1208.03 (Jan. 2017).
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ordinary language meaning” since “[t]he language meaning is likely to be the primary
meaning to the public.”) (citing Fisher Radio Corp. v. Bird Electronic Corp., 162 USPQ
265, 266-67 (TTAB 1969) (BIRD not primarily merely a surname)). In cases such as
this where there is “no common word meaning,” we must decide the “more difficult
question” of whether the mark “would be perceived as a surname or as an arbitrary
term.” Darty, 225 USPQ at 653. In other words, “[w]e also consider—if there is
evidence to so indicate—whether the public may perceive the mark to be primarily a
meaningless, coined term.” Adlon, 120 USPQ2d at 1719. In this regard, Applicant
contends that her proposed mark HUSMAN is a coined term representing a play on
the words “husband” and “man” to refer to an unmarried man in a committed
relationship. Applicant argues that her clothing items are “being offered precisely to
spread this meaning and celebrate it, as a celebration of males who are committed to
their partners outside of marriage.” Brief, p. 6; 7 TTABVUE 11. In support thereof,
Applicant points to a single screenshot from her e-commerce website displaying the
mark and tag line “HUSMAN: No Band, Just the Man” and her promotion of this
marketing concept:5

5 Applicant’s website excerpt does not include the full address (url) for the web page or the
date it was downloaded (either by the information printed on the web page itself, or by
providing this information in Applicant’s response). Nonetheless, because the Examining
Attorney failed to object, we have considered this evidence. See In re White, 73 USPQ2d 1713,
1716 n.5 (TTAB 2004).
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Applicant emphasizes that the only manner in which consumers can purchase
Applicant’s clothing is via her own direct-to-consumer e-commerce website.
An applicant’s promotion of a coined term constitutes “legitimate evidence as to
perceptions of nonsurname significance.” In re Petrin Corp., 231 USPQ 902, 904
(TTAB 1986) (holding PETRIN primarily merely a surname despite applicant’s
argument that the mark represents an abbreviated contraction of “petroleum” and
“insulation” where “the specimen brochure makes no attempt to establish or promote
such a connection or to clarify or even hint at the shorthand contraction.”).6 However,
a single piece of advertising material from the Internet, within the context of an
intent-to-use application, cannot, standing alone, establish the extent of public
exposure to Applicant’s promotional campaign. For example, we have no declaration
or affidavit from Applicant attesting to how long her website has been operational
and/or approximately how many “hits” or views the website has garnered.
Furthermore, we have no sales or advertising data for items sold under her mark, if
any. While we acknowledge Applicant’s creativity, we cannot conclude on the record
before us that consumers will perceive HUSMAN as a clever play on words and not
primarily merely a surname.
Applicant also argues that “Husman” is such a rare surname that the public is
unlikely to view it as primarily merely a surname. The statute, however, makes no
distinction between rare and commonplace surnames. Kahan & Weisz Jewelry, Mfg.

6 To be clear, this argument is distinct from a claim of acquired distinctiveness under
Trademark Act Section 2(f).
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Corp., 184 USPQ at 422. See also Eximius Coffee, 120 USPQ2d at 1282 (“The statute
does not exempt wholesale from this prohibition those surnames shared only by a
few, or provide that the purpose of the prohibition is to protect others’ rights to use
their surnames except for those with uncommon surnames.”). Even a rare surname
may be unregistrable under Trademark Act Section 2(e)(4) if its primary significance
to purchasers is that of a surname. See e.g., In re Industrie Pirelli Societa per Azioni,
9 USPQ2d 1564, 1566 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989) (although
the record proves that “Pirelli” is a rare surname, the evidence shows that mark
PIRELLI would be viewed primarily as a surname by the relevant public.). See also
Petrin, 231 USPQ at 904.
In sum, the Examining Attorney has made of record multiple sources showing that
HUSMAN is an actual surname, that there are no other commonly recognized
meanings, and that its structure and pronunciation resembles other surnames.
Applicant’s arguments and evidence that her applied-for mark represents a coined
term fall short for the reasons explained above. Thus, on this record, the “primary
significance of the mark as a whole to the purchasing public” is that of a surname.
Accordingly, we find that that the evidence establishes that the mark HUSMAN
for “Hats; Long-sleeved shirts; Shirts; Sweat shirts; T-shirts” would be perceived by
the purchasing public as primarily merely a surname within the meaning of Section
2(e)(4) of the Trademark Act, and it is thus unregistrable in the absence of acquired
distinctiveness.
Decision: The refusal to register is affirmed.