Lorch SchweiBtechnik GmbH

Trademark Trial and Appeal Board

Nov 29, 2012

No. 85037839 (T.T.A.B. Nov. 29, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
November 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lorch Schweißtechnik GmbH
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Serial No. 85037839
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Mark Harrison and Michael E. Hall of Venable LLP for Lorch Schweißtechnik
GmbH

Hélène Liwinski, Trademark Examining Attorney, Law Office 104 (Chris Doninger,
Managing Attorney).
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Before Holtzman, Mermelstein, and Gorowitz Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Lorch Schweißtechnik GmbH (applicant) filed an application to register the
mark LORCH on the Principal Register in standard character form for
Welding wire; metal welding rods in Class 6;

Electric welding machines; electric arc welding machines; electric plasma
cutting machines in Class 7; and

Electric arc welders; welding torches; accessories for electric welding and
electric cutting apparatus, namely, electric cables, welding electrodes,
electrode holders for electric arc welders, grounding clamps for electric arc
welders, electrical connectors and adaptors for electric arc welders; accident
protection equipment for welders, namely, welding gloves and protective
eyewear, namely, welding shields, welding masks; controls for electric
Serial No. 85037839

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welding and electric cutting apparatus, namely, welding transformers and
electric power supplies for electric arc welders in Class 9.1

The examining attorney refused registration on the ground that the mark is
primarily merely a surname under Section 2(e)(4) of the Trademark Act, 15 U.S.C.
§ 1052(e)(4). The refusal was made final in the Office action dated March 21, 2011.
Applicant has appealed the refusal.2
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 § 2(f) of the Act, 15 U.S.C. § 1052(f). The Board has
identified five factors 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 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 “look
and feel” of a surname; and (5) whether the mark is presented in a stylized form
distinctive enough to create a separate non-surname impression. In re Benthin

1 Serial No. 85037839 filed on May 13, 2010, pursuant to Section 44(e) of the Trademark
Act, based on European Community Registration No. 002358851, issued on August 7, 2003.
2 Applicant filed a Request for Reconsideration on September 13, 2011, to amend the
application to the Supplemental Register if the Board affirms the Section 2(e)(4) refusal.
The examining attorney denied the Request but did not address the issue of whether the
application was eligible for registration on the Supplemental Register in view of the
expiration of applicant’s European Community registration. On February 17, 2012, the
examining attorney requested remand to address that issue. The examining attorney
submitted additional evidence on the merits of the surname refusal with both the denial of
the Request for Reconsideration and during remand. Applicant has objected to the
submission of this evidence. The evidence submitted with both the Denial of the Request
for Reconsideration and the Motion for Remand is identical. Because the evidence was
properly made of record in the Denial of the Request for Reconsideration, applicant’s
objections are overruled.

Serial No. 85037839

3

Management GmbH, 37 USPQ2d 1332-33 (TTAB 1995). Since the mark LORCH is
in standard character form, the fifth Benthin factor is irrelevant here.
(1) The degree of the surname's “rareness”
We turn to the first Benthin factor, which is the degree of the surname's
“rareness.” The examining attorney made of record a portion of a “Public Records:
Surname” search from the Lexis-Nexis database, which found 470 listings for the
name “Lorch.”3 As applicant noted in its brief, “this listing contains some
duplicates.” Appeal Brief at p. 6.
The examining attorney also made of record documents referring or relating
to approximately 35 – 40 people whose surname is Lorch4 and she introduced

3 On page 4 of the Denial of Request for Reconsideration, the examining attorney also refers
to “a separate online dictionary” which “defines LORCH as a surname, with a frequency
rating of 20,124.” The relevance of this statement is not known. Accordingly, we give no
weight to this evidence.
4 In the Office action dated August 26, 2010, the examining attorney made of record several
documents referring to individuals with the surname “Lorch”, i.e., the website of Donatella
Lorch, biographical information about reporter Matt Lorch from the website of the Boston
affiliate of NBC, and a Wikipedia article about Lee Lorch, a mathematics professor and civil
rights activist.
In the second Office action dated March 21, 2011, she made of record, the following
information referring to individuals with the surname “Lorch”: an advertisement for
attorney Linda Lorch from New Albany, Indiana, several articles about George Lorch, who
was likely to become the chairman of Pfizer, several articles about criminal charges
pending against Ernest (Ernie) Lorch, and a and a listing from The Internet Movie
Database for 25 people in the entertainment industry with the surname Lorch.
In the Denial of the Request for Reconsideration dated October 21, 2011, biographical
information about Jay Lorch and Rajul Pandya-Lorch, the flickr page of Mark Lorch, 10
listings from Facebook (one of which was for Donatella Lorch) and articles about Lee Lorch
and his wife Grace; and about Ernest Lorch were made of record.
The documentation introduced about Lee and Grace Lorch does reflect that the couple was
known as civil rights activists. However, the evidence does not prove that Lee and Grace
Lorch were generally well-known.

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information about the “Lorch Coat of Arms/ Lorch Surname History from the
website my-coat-of-arms.com, and a definition of “LORCH” (one who came from
Lorsch, in Hessia) from meaningofnames.com.5 We do not find this evidence
sufficient to support the examining attorney’s contention that the “evidence of
record demonstrates prominent persons in media and history that impress upon the
public the significance of the surname Lorch.” Examining Attorney’s Brief at p. 6.
Therefore, for the purpose of this decision, we base our determination of the
degree of the surname’s rareness on the 470 listings for the name Lorch from the
Lexis-Nexis database. In In re Giger, 78 USPQ2d 1405 (TTAB 2006), the Board
determined that “Giger,” is not a common surname since there were only 545
listings for the name. Id at 1407 and 1408. In re Joint-Stock Co. “Baik”, 84
USPQ2d 1921 (TTAB 2007), the Board determined that Baik appears to be an
extremely rare surname with only 456 listings of individuals with the surname. Id
at 1922.
As a result, on this record, we conclude that LORCH is an extremely rare
surname.

5 The examining attorney also refers to the website Mundia, which she asserts shows
“recent activity for those with the surname Lorch appearing in the United States.” The
exhibit includes a chart with four red figures. Three of the figures are placed in Europe.
The fourth appears to be placed in Mexico or the southern United States. There is no
specific mention of the United States, nor is it indicated where the referenced people reside.
As such, we did not find this exhibit to be probative of any use of Lorch as a surname in the
United States.
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(2) Whether the mark is a surname of anyone connected with
applicant.

The second factor that we look at is whether anyone connected with the
applicant has the mark as a surname. There is no evidence in the record
addressing this issue, so we treat it as neutral.
(3) Whether the mark has any recognized meaning other than as a
surname.

The examining attorney introduced a number of dictionary sites to establish
that “lorch” does not have any recognized meaning.6 No contradictory evidence was
produced by the applicant. Accordingly, we find that mark does not have any
recognized meaning.
(4) Whether the mark has the “look and feel” of a surname.
The determination of whether a mark has the “look and feel” of a surname is
a subjective one. The question we must answer is whether LORCH looks or sounds
like a surname and would be perceived as such by the consuming public. See In re
Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564,1566 (TTAB 1988) (“certain
rare surnames look like surnames, and certain rare surnames do not …‘Pirelli’ falls
into the former category, while ‘Kodak’ falls into the latter.”). The examining
attorney offered no evidence or argument on this point. In our view, Lorch, unlike
Pirelli, does not sound like a surname; nor has the examining attorney shown that

6 The evidence submitted to prove that “lorch” does not have any recognized meaning is not
contradicted by the evidence introduced by the examining attorney from the “meaning-of-
names.com” website that Lorch means “one who came from Lorsch, in Hessia.” See March
21, 2011, Office action at page 11. There is no evidence that this definition the “meaning-of-
names.com” website is generally known to the American public or that the definition of
Lorch therefrom would be generally recognized in the United States.
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it has the structure or format of a surname. Accordingly, we conclude that LORCH
does not have the “look and feel” of a surname.
After weighing all of the elements in the Benthin test, and keeping in mind
that any doubt as to whether the mark is primarily merely a surname must be
resolved in applicant's favor, see In re Joint-Stock Co. “Baik”, 84 USPQ2d at 1922 );
Benthin Management, 37 USPQ2d at 1334, we find that LORCH is not primarily
merely a surname.7
Decision: The refusal to register LORCH under Section 2(e)(4) of the
Trademark Act is reversed.

7 Our decision in this case renders applicant’s request in the alternative to amend to the
Supplemental Register moot.