Masco Canada Ltd.

Trademark Trial and Appeal Board

Oct 10, 2017

No. 86868050 (T.T.A.B. Oct. 10, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 10, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Masco Canada Ltd.
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Serial No. 86868050
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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.
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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.”
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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.
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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.
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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).
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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.
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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
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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.
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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.