Jaguar Cars Limited

Trademark Trial and Appeal Board

Apr 7, 2009

No. 77035168 (T.T.A.B. Apr. 7, 2009)

Mailed: April 7, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jaguar Cars Limited
________

Serial No. 77035168
_______

Hope V. Shovein of Brooks Kushman P.C. for Jaguar Cars
Limited.

Eli J. Hellman, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Hairston, Walters and Zervas, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Jaguar Cars Limited has filed an application to
register the mark DAIMLER (in standard character form) for
“land vehicles” in International Class 12.1 Registration
has been finally refused pursuant to Section 2(e)(4) of the

1 Application Serial No. 77035168, filed on November 2, 2006.
The application is based on applicant’s claim of ownership of
United Kingdom Registration No. 363521, under Trademark Section
44(e).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77035168
2
Trademark Act, 15 U.S.C. 1052(e)(4), on the ground that the
mark is primarily merely a surname.2
Applicant has appealed; applicant and the trademark
examining attorney have filed briefs.
Before turning to the merits of the surname refusal,
we must address an evidentiary issue. The examining
attorney submitted with his final office action the results
of a search of Daimler in Whitepages.com, and with his
denial of applicant’s request for reconsideration the
results of a second search of Daimler in the same database.
Applicant objects to the results of the second
Whitepages.com search as untimely because they were
submitted after the filing of the Notice of Appeal.
Applicant maintains that while TBMP §1207.04 (2d ed. rev.
2004) permits an examining attorney to submit new evidence
with a denial of a request for reconsideration, in this
case, the results of the second Whitepages.com search are
not new evidence, but rather the same evidence, with
increased results.
Applicant’s argument is unfounded. An examining
attorney is permitted, in connection with a denial of a

2 The examining attorney also initially refused registration
under Section 2(d) of the Trademark Act in view of several prior
registrations owned by DaimlerChrysler AG. The refusal was
withdrawn after applicant submitted a consent agreement.
Ser No. 77035168
3
request for reconsideration, to submit the same type of
evidence that was previously submitted during examination
with updated results. Thus, in this case, the results of
the second Whitepages.com search are not untimely.
Applicant’s objection thereto is accordingly overruled.
We turn then to the merits of the surname refusal.
Whether a term is primarily merely a surname depends on the
primary significance of the term to the purchasing public.
In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238
(CCPA 1975); and In re Champion International Corp., 229
USPQ 550 (TTAB 1985). The examining attorney bears the
burden of establishing a prima facie case in support of the
conclusion that the primary significance of the term to the
purchasing public would be that of a surname. In re BDH
Two Inc., 26 USPQ2d 1556 (TTAB 1993) and cases cited
therein. If a prima facie case is presented, then the
burden of rebutting that showing shifts to the applicant.
In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ
652 (Fed. Cir. 1985); and In re Harris-Intertype Corp.,
supra.
“The question of whether a word sought to be
registered is primarily merely a surname within the meaning
of the statue can only be resolved on a case by case
basis,” taking into account various factual considerations.
Ser No. 77035168
4
Darty, 225 USPQ at 653. There are five accepted factors to
be considered in the analysis:
(1) Is the word a common or rarely used surname?
(2) Does anyone connected with the applicant have that
surname?
(3) Does the word have meaning other than as a
surname?
(4) Does the word look and sound like a surname?
(5) Is the word presented in use in a stylized form
distinctive enough to create a separate non-surname
significance?
In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-34
(TTAB 1995) [BENTHIN held not primarily merely a surname
because it was a rare surname, did not look and sound like
a surname, and was set forth in a highly stylized oval
design].
Because applicant seeks to register DAIMLER in
standard character form, the fifth factor is not a factor
in this case and we consider the record in light of the
first four factors.3

3 Contrary to the examining attorney’s contention, the fact that
applicant seeks to register its mark in standard character form
does not weigh in favor of finding that DAIMLER is primarily
merely a surname.
Ser No. 77035168
5
We consider first the rareness of the surname. With
his first office action, the examining attorney
submitted the results of a search of what he characterized
as a nationwide telephone directory of names from the
Lexis/Nexis database. This search returned 77 entries for
the surname Daimler.
With his final office action, the examining attorney
submitted the results of a search of the Lexis/Nexis EZFIND
database which indicated that there were 744 entries for
the surname Daimler and 100 were made of record; and the
results of a search of WhitePages.com which returned 54
entries for the surname Daimler and ten were made of
record.
Finally, in his denial of applicant’s request for
reconsideration, the examining attorney submitted the
results of a second search of WhitePages.com which returned
89 entries for the surname Daimler and ten were made of
record.
The examining attorney argues that “[the] record
contains competent, admissible, and timely evidence that
DAIMLER is a surname. Although DAIMLER appears to be a
relatively rare surname, a rare surname may be
unregistrable under Section 2(e)(4) if its primary
Ser No. 77035168
6
significance to purchases (sic) is that of a surname.”
(Brief, unnumbered p. 6).
Applicant maintains that the search results submitted
by the examining attorney vary widely in terms of the
number of Daimler listings. Specifically, applicant states
that the examining attorney “cannot be permitted to rely on
new, conflicting and inaccurate evidence in each
communication. In this case, the Examining Attorney’s
evidence ranges from a possible 54 to 744 individuals
having DAMLIER as a surname.” (Brief, p. 3).
In response to this criticism, the examining attorney
states that “it is inconsequential that the database
searches resulted in a wide range of results.” (Brief,
unnumbered p. 7). We disagree. It appears that many of
the 744 Daimler listings retrieved from the Lexis/Nexis
EZFIND database are duplicative because this database is a
group file containing nine types of person locator files.
Thus, we are not convinced that the Daimler listings from
this database are representative of anywhere close to 744
different individuals. Under the circumstances, and
inasmuch as the results from the first Lexis/Nexis search
and the two searches of Whitepages.com are more consistent
with one another, i.e., 77, 54 and 89 listings,
respectively, we will rely on such listings in determining
Ser No. 77035168
7
the rareness of the Daimler surname. This evidence shows
fewer than 100 persons whose surname is Daimler, and the
examining attorney submitted no news articles evidencing
media attention or publicity given to persons with the
Daimler surname. We conclude, therefore, that Daimler is a
rare surname.
We note, however, that a mark may be found to be
primarily merely a surname even though it is not a common
surname. See In re Giger, 78 USPQ2d 1405 (TTAB 2006). See
also In re E. Martoni Co., 78 USPQ2d 589 (TTAB 1975); and
In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564
(TTAB 1988). Furthermore, there is no minimum number of
listings needed to prove that a mark is primarily merely a
surname.
We turn to the second factor, i.e., whether any
individual connected with applicant has the surname in
question. Evidence that an individual associated with
applicant has the surname Daimler could well indicate the
public recognition of the term as a surname. The examining
attorney submitted entries for Daimler from the
Dictionary.com website which indicate that Gottlieb Daimler
(1834-1900) was a German automotive engineer, inventor and
manufacturer who produced the first high-speed internal-
combustion engine. In addition, the examining attorney
Ser No. 77035168
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introduced Wikipedia entries for Daimler Motor Company and
Daimler Motoren Gesellschaft. The Wikipedia information
indicates that Gottlieb Daimler founded the German company,
Daimler Motoren Gesellschaft in 1890; that Gottlieb Daimler
licensed the Daimler name in a number of countries,
including the United Kingdom, where the British motor
vehicle manufacturing company known as Daimler Motor
Company was formed in 1896; and that Daimler Motor Company
was acquired by applicant in 1960. However, there is no
evidence that anyone with the surname Daimler is currently
associated with applicant, and we are unable to conclude
that this evidence reflects current perception of the term
DAIMLER as a surname.
The third factor we consider is whether the term
DAIMLER has non-surname significance. The examining
attorney relies on the Dictionary.com entries for Daimler
which show the only meaning of the term as the surname of
Gottlieb Daimler. Applicant, on the other hand, argues
that the term DAIMLER has historical significance in that
it identifies Gottlieb Daimler. Applicant maintains that
Gottlieb Daimler is a historical figure as evidenced by the
information in the Dictionary.com entries and Wikipedia
excerpt. Applicant also states that Gottlieb Daimler’s
contributions to the automobile industry have been well
Ser No. 77035168
9
documented in several publications. However, applicant
never made copies of this material of record, and
therefore, we can give it no consideration.
Decisions concerning historical names generally draw a
line between names which are so widely recognized that they
are almost exclusively associated with a specific
historical figure and are thus not considered primarily a
surname, e.g., Lucien Piccard Watch Corp. v. Crescent
Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) [DA
VINCI not primarily merely a surname because it primarily
connotes Leonardo Da Vinci], and names which are only semi-
historical in character and thus can be perceived as
primarily merely a surname, e.g. Frances Rothschild, Inc.
v. U.S. Cosmetic Fragrance Marketing Corp., 223 USPQ 817
(N.D. Tex. 1983) [ROTHSCHILD held primarily merely a
surname despite being the surname of a historical banking
family]; and In re Champion International Corp., supra
[MCKINLEY held primarily merely a surname despite being the
surname of a deceased president].
In this case, we are not persuaded that Gottlieb
Daimler is a historical figure. While we recognize that he
is listed in dictionaries and Wikipedia, that is hardly
evidence that he is widely-known. Clearly, not everyone
listed in a dictionary and/or Wikipedia is widely-known.
Ser No. 77035168
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We find that Gottlieb Daimler is at best a semi-historical
figure and, therefore, the significance of such name is not
so great as to eclipse the surname significance of the
term.
We turn, then, to the fourth and final factor to be
discussed, i.e., whether DAIMLER has the look and feel of a
surname. When a term does not have the look and feel of a
surname, it clearly favors the applicant. On the other
hand, when it does look and feel like a surname, such a
finding merely tends to reinforce a conclusion that the
term’s primary significance is as a surname. DAIMLER does
not have the look or sound of an initialism or acronym; nor
does it appear to be a coined term. Rather, the term
DAIMLER “appears to be a cohesive term with no meaning
other than as a surname.” In re Gregory, supra at 1796.
Further, the existence of individuals with the name Daimler
tends to reinforce the conclusion that DAIMLER has the look
and feel of a surname. Also, the evidence submitted by the
examining attorney concerning Gottlieb Daimler indicates
that the surname significance of Daimler will be reinforced
because of its association with him. Furthermore, we note
that applicant’s goods are land vehicles, and surnames
(e.g., Ford, Chrysler, and Buick) are frequently used as
Ser No. 77035168
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marks for such goods. Therefore, we conclude that the term
DAIMLER has the look and feel of a surname.
An additional argument made by applicant requires
comment. Applicant maintains that it is entitled to
registration of the mark DAIMLER because the USPTO
previously approved for publication its Application Serial
No. 75594759 for the mark DAIMLER for motor vehicles. The
USPTO’s action in connection with a different application
owned by applicant does not entitle it to registration in
this case. The Board’s task in this appeal is to
determine, based on the record before us, whether
applicant’s mark DAIMLER is primarily merely a surname.
Each case must be decided on its own merits and we are not
privy to the facts involved with that application.
Moreover, the determination of registrability of a
particular mark by an examining attorney cannot control our
decision in the case now before us. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
[“Even if some prior registrations had some characteristics
similar to (applicant’s application), the PTO’s allowance
of such prior registrations does not bind the Board or this
court.”]
In sum, when we consider the evidence as a whole, we
find that the USPTO has made out a prima facie case that
Ser No. 77035168
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DAIMLER is primarily merely a surname and that applicant
has not rebutted this prima facie case.
Decision: The refusal to register is affirmed.