Merillat Industries

Trademark Trial and Appeal Board

Mar 23, 2004

No. 76357511 (T.T.A.B. Mar. 23, 2004)

Mailed: Paper No. 7
March 23, 2004 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Merillat Industries, Inc.
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Serial No. 76357511
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Edgar A. Zarins, Esq. for Merillat Industries, Inc.
Wendy B. Goodman, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
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Before Holtzman, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Merillat Industries, Inc. [applicant] has applied to
register MARTEL as a mark for "cabinetry, namely, kitchen
and bathroom cabinets and cabinet doors," in International
Class 20. The application is based on applicant's
statement that it has a bona fide intention to use the mark
in commerce.
The examining attorney has refused registration under
Section 2(e)(4) of the Lanham Act, 15 U.S.C. § 1052(e)(4),
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76357511
2
on the ground that MARTEL is primarily merely a surname and
would be perceived as such when used on or in connection
with the identified goods. When the refusal was made
final, applicant appealed. Applicant and the examining
attorney have filed briefs, but applicant did not request
an oral hearing. We affirm the refusal.
"[T]he PTO [has] the burden of establishing a prima
facie case that [MARTEL] is ‘primarily merely a surname.’"
In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ
652, 653 (Fed. Cir. 1985). Moreover, “the question of
whether a [mark] sought to be registered is primarily
merely a surname within the meaning of the statute can only
be resolved on a case by case basis,” taking into account a
number of various factual considerations. Id.
This Board has identified at least five different
factors that, depending on the facts of a particular case,
will have a bearing on determining whether a particular
mark is primarily merely a surname. See In re Benthin
Management, 37 USPQ2d 1332, 1333 (TTAB 1995). In Benthin,
the Board noted that one factor to be considered was “the
degree of a surname’s rareness.” See also In re Sava
Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994) and In re
Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987).
Ser No. 76357511
3
In this case, the examining attorney has shown that a
search of the "PowerFinder" database of telephone listings
retrieved more than 3500 listings of individuals with the
name MARTEL. Moreover, excerpted listings from this search
reveal that individuals with this surname live in states in
every region of the country, i.e., the Northeast, Mid-
Atlantic, South, Midwest, Southwest, and West. In addition
to these telephone database listings, the examining
attorney put in 28 excerpts from stories appearing in the
NEXIS articles database, each of which includes reference
to an individual with the surname MARTEL.1
While the examining attorney argues that this evidence
confirms that MARTEL is a common surname, applicant
concedes only that this evidence shows the term can
"operate as a surname." Applicant contends "almost any
term can be found as a surname in an electronic phone
list." We find the examining attorney's evidence
manifestly sufficient to establish that MARTEL is a common
surname.
The second factor we consider is whether there is
“anyone connected with applicant” having the surname
1 These excerpts were selected from among the first 200 excerpts
of more than 13,000 retrieved in the search of the NEXIS database
[the examining attorney viewed the first 200 of all returns from
the search].
Ser No. 76357511
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MARTEL. Benthin, 37 USPQ2d at 1333; In re Monotype Corp.,
14 USPQ2d 1070, 1071 (TTAB 1989). There is no evidence on
this factor, as the examining attorney did not make any
inquiry on the subject and applicant did not volunteer any
information on the subject. Thus, this factor favors
neither applicant nor the examining attorney and does not
figure in our analysis.
The third factor is whether the term has any
recognized meaning other than as a surname. The examining
attorney has put in a photocopy of a page from a dictionary
showing that there is no listing for MARTEL. Applicant has
argued that MARTEL, when used by applicant, will be
perceived as "nothing more than a fanciful identifier for
applicant's cabinet collection," but applicant has not put
in any evidence to show that the term would have any
significance other than as a surname. This factor favors
the examining attorney.
The fourth factor is whether MARTEL has the “structure
and pronunciation” of a surname, or stated somewhat
differently, the “look and sound” of a surname. In re
Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988). See
also, Benthin, 37 USPQ2d at 1333. On this factor, the
examining attorney relies on the various NEXIS excerpts,
arguing, in essence, that news stories about individuals
Ser No. 76357511
5
with the name "Martel" will lead those who perceive MARTEL
used as a designation for cabinets, to conclude that it is
a surname. Applicant merely argues that the term does not
have the look and feel of a surname. As the evidence
bearing on this factor is scant, we cannot say that it
strongly favors either the applicant or the examining
attorney. Nonetheless, since no other meaning has been
established for the term, and it is in common use, we agree
with the examining attorney that prospective purchasers of
cabinets would be more likely to view the term as a surname
than as a coined term. Thus, this factor also favors the
examining attorney.
The last factor is whether the term is presented in
such a stylized form as to imbue it with distinctiveness
that it might otherwise not have. This is not a factor in
this case, since applicant has applied to register MARTEL
in typed form.
In conclusion, we find that the examining attorney has
not only established a prima facie case for refusal under
Section 2(e)(4), but a solid, unrebutted case.
Decision: The refusal to register on the ground that
MARTEL will, when used, be perceived as primarily merely a
surname is affirmed.