Masco Canada Ltd.Download PDFTrademark Trial and Appeal BoardOct 10, 2017No. 86868050 (T.T.A.B. Oct. 10, 2017) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: October 10, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Masco Canada Ltd. _____ Serial No. 86868050 _____ Edgar A. Zarins of Masco Corp. for Masco Canada Ltd.1 Dinisha Fernando Nitkin,2 Trademark Examining Attorney, Law Office 110, Chris A. F. Pedersen, Managing Attorney. _____ Before Quinn, Cataldo and Shaw, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Masco Canada Ltd. (“Applicant”) seeks registration on the Principal Register of the mark ALLCROFT (in standard characters) for “Bathroom accessories, namely, towel 1 The application and prosecution history do not contain an explanation of the precise nature of the relationship between Masco Corp. and Masco Canada Ltd. Nonetheless, it appears from the application that Masco Corp. is a domestic entity related to Applicant Masco Canada Ltd. 2 During prosecution, the involved application was examined by a different Trademark Examining Attorney. For purposes of this decision, we will refer to both collectively as “Examining Attorney.” Serial No. 86868050 - 2 - bars, towel rings, tissue holders and toothbrush-tumbler holders” in International Class 21.3 The Examining Attorney has refused registration of Applicant’s mark under Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4), on the ground that the proposed mark is primarily merely a surname. When the refusal was made final, Applicant appealed. We affirm the refusal to register. Section 2(e)(4) of the Trademark Act 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.”4 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 as a whole to the purchasing public is that of a surname. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411 (Fed. Cir. 2017). See also In re Beds & Bars Ltd., 122 USPQ2d 1546, 1548 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1277 (TTAB 2016); In re Integrated Embedded, 120 USPQ2d 1504 (TTAB 2016). Various inquiries or “factors” may be considered in the factual determination of whether the purchasing public would perceive a proposed mark as primarily merely a surname, 3 Application Serial No. 86868050 was filed on January 7, 2016, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. 4 Applicant has not claimed that ALLCROFT has acquired distinctiveness under Trademark Act Section 2(f). Nor has Applicant amended the application to seek registration on the Supplemental Register. Serial No. 86868050 - 3 - including the following that have been raised in this case: whether the term has a non-surname, “ordinary language” meaning; the extent to which the term is used by others as a surname – i.e., rarity; whether the term has the structure and pronunciation of a surname; and whether the public may perceive the mark, in the alternative, to be primarily a meaningless, coined term.5 See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653-54 (Fed. Cir. 1985); Eximius Coffee, 120 USPQ2d at 1278 n.4 (reviewing factors from Darty and In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) and noting there is no need to discuss other inquiries for which the record lacks relevant evidence); In re Adlon Brand GmbH & Co., 120 USPQ2d 1717, 1719 & 1721 (TTAB 2016) (noting the consideration, if there is relevant supporting evidence of record, “of an alternative perceived meaning (which may include the perception of the mark as a coined term)”). We conduct our analysis from the perspective of 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.” 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)). 5 The record in this case is silent as to whether anyone connected with Applicant has the surname Allcroft. See Benthin, 37 USPQ2d at 1333-34. As a result, we need not consider this inquiry or “factor” in our determination herein. In addition, the proposed mark in this case is displayed in standard characters. Accordingly, it is unnecessary to consider whether any stylization of the lettering is distinctive enough to create a separate commercial impression. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); Integrated Embedded, 120 USPQ2d at 1506 n.4. Serial No. 86868050 - 4 - In support of the refusal, the Examining Attorney introduced the following evidence: • Search results from the Lexis.com Surname Database showing 63 entries for “Allcroft.” See April 28, 2016 first Office Action at 5-7. • Search results from the United States Census Bureau showing 30 CROFT and CROFT-formative surnames consisting of a first syllable followed by CROFT; the number or “count” of individuals in the United States with such CROFT and CROFT-formative surnames; and the 10 most frequently occurring surnames in the United States. See November 4, 2016 final Office Action at 3, 5. • Search results from OneLook (onelook.com) showing no recognized meaning for “Allcroft” as a word in the English language. Id. at 4. • 5 third-party registrations for the marks ASHCROFT, BANCROFT, MOORCROFT, ROYCROFT and RAVENSCROFT, all issued on the Principal Register with a claim of acquired distinctiveness under Trademark Act Section 2(f). Id. at 6-16. This evidence demonstrates that “ALLCROFT” is an actual surname, and that “ALLCROFT” has no other “ordinary language meaning.”6 See Darty, 225 USPQ at 653; Adlon, 120 USPQ2d at 1721 (lack of dictionary entry for the applied-for mark created a “strong inference” that the mark had no other non-surname meaning). Applicant has not introduced any evidence that ALLCROFT has an additional, non- surname, meaning. Applicant contends The Examining Attorney has refused registration of applicant’s mark ALLCROFT asserting that the term is primarily merely a surname. Despite providing a limited number of examples of the term ALLCROFT appearing as a surname, the Examining Attorney has maintained the 6 We observe that the Examining Attorney could have strengthened this evidentiary showing with Lexis/Nexis or internet evidence of public exposure in the United States to ALLCROFT as a surname. In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017). Serial No. 86868050 - 5 - refusal by citing “croft” derivatives in support of the surname refusal. In addition to the few instances of surname use, the term does not provide an immediate connotation as a surname. The facts of this case are similar to the facts of the Board decision in In re Joint Stock Company “Baik”, 84 USPQ2d 1921 (TTAB 2007) where the Board reversed a refusal to register the mark BAIK for vodka. The Board found BAIK to be a rare surname with no evidence that anyone with that surname has achieved any notoriety. The Board also noted that “the similarity of Baik to other obscure surnames” does not give the term Baik the look and feel of a surname. The Board maintained that the purpose behind prohibiting the registration of marks that are primarily merely surnames is to keep surnames available for people who wish to use their own surnames in their businesses. The Board opined “if the surname is extremely rare, it is also extremely unlikely that someone other than the applicant will want to use the surname for the same or related goods or services as that of the applicant.” The Board also added that “interpreting the look and feel factor to refuse registration of marks simply because they are similar to recognized surnames does not serve the intention of the statute.” Under a very similar set of facts, this case revolves around whether the term ALLCROFT can be considered to be a protectable surname. Clearly, the Board has ruled otherwise. Accordingly, applicant respectfully requests reversal of the Examining Attorney’s refusal to register.7 Contrary to Applicant’s contentions, no set rule governs the kind or amount of evidence necessary to show that the applied-for mark would be perceived as primarily merely a surname. Eximius Coffee, 120 USPQ2d at 1278. We reject Applicant’s argument that the rarity of ALLCROFT as a surname means that the public is unlikely to view it as primarily merely a surname. Even though we observe that the Examining Attorney’s evidence suggests some duplication of individuals bearing the surname “ALLCROFT,” the evidence of individuals in a number of locations in the 7 4 TTABVUE 2. Serial No. 86868050 - 6 - United States who bear the ALLCROFT surname show that it “is not so unusual that such significance would not be recognized by a substantial number of persons.” Darty, 225 USPQ at 653. Moreover, “even a rare surname is unregistrable if its primary significance to purchasers is a surname.” Id. at 1281; see also In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989) (holding that despite the rarity of “Pirelli” as a surname, the relevant public still would view it primarily as a surname). Further, the statutory provision makes no distinction between rare and commonplace surnames. Adlon, 120 USPQ2d at 1721; Eximius Coffee, 120 USPQ2d at 1282. We do not find persuasive Applicant’s arguments grounded upon the Board’s earlier decision in Baik because the statute does not create a separate category for marks consisting in whole or in part of rare surnames as opposed to more commonly encountered surnames. As to the “look and feel” of the term, more properly addressed as the structure and pronunciation of the mark, we note the Examining Attorney’s evidence that ALLCROFT is similar in structure and pronunciation to more common surnames such as Croft (12,702 individuals), Bancroft (5335 individuals), Ashcroft (1722 individuals), Barcroft (355 individuals), Holdcroft (315 individuals), Ravenscroft (932 individuals), Moorcroft (174 individuals), Roycroft (521 individuals) and others. See November 4, 2016 final Office Action at 3. We further note the Examining Attorney’s evidence that ASHCROFT, BANCROFT, MOORCROFT, ROYCROFT, and RAVENSCROFT are registered by third parties on the Principal Register with a claim of acquired distinctiveness under Trademark Act Section 2(f). Id. at 6-16. See Serial No. 86868050 - 7 - Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (A claim of distinctiveness under Section 2(f) may be construed as conceding that the matter to which it pertains is not inherently distinctive and, thus, not registrable on the Principal Register absent proof of acquired distinctiveness.). This evidence tends to support and corroborate the Examining Attorney’s position that ALLCROFT will be perceived as a surname.8 We note in addition that whether a term possesses the structure and pronunciation of a surname is a decidedly subjective determination. See Adlon, 120 USPQ2d at 1724 (rejecting an argument based on structure and pronunciation because “[w]ith respect to this difficult type of argument, we would require more objective evidence, whether from Applicant or the Examining Attorney, of how members of the public would perceive the structure and sound … and whether they would be likely to perceive it as similar to the structure and sound of other surnames, common words or coined terms.”). There is no evidentiary support in the record for the position that ALLCROFT lacks the structure and pronunciation of a surname or would be viewed as anything other than a surname. See Adlon, 120 USPQ2d at 1719 (stating that consideration will be given to whether the public may perceive the mark to be primarily a meaningless, coined term only “if there is evidence to so indicate”). “In order to show that the public would perceive a proposed mark as a coinage, in the face of evidence establishing that the mark is a surname with no other recognized 8 As similarly pointed out in footnote 6, supra, the Examining Attorney could have strengthened this evidentiary showing with Lexis/Nexis or internet evidence of public exposure to these various surnames. Serial No. 86868050 - 8 - meaning, some objective countervailing evidence of such a perception is required.” Id. at 1723. Overall, the record contains evidence showing that ALLCROFT is an actual surname and that no other meaning exists. This evidence is corroborated by evidence that ALLCROFT is similar in structure and pronunciation to more common surnames. Applicant’s unsupported argument that consumers would not perceive the term as a surname due to is rarity is unconvincing. Thus, on this record, the “primary significance of the mark as a whole to the purchasing public” is that of a surname. ALLCROFT would be perceived by the purchasing public as primarily merely a surname within the meaning of Section 2(e)(4) of the Trademark Act. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation