Mittal Steel Technologies Ltd.

Trademark Trial and Appeal Board

Nov 18, 2008

No. 78979091 (T.T.A.B. Nov. 18, 2008)

Mailed: November 18, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mittal Steel Technologies Ltd.
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Serial No. 78979091
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Mark H. Tidman of Arent Fox LLP for Mittal Steel
Technologies Ltd.

Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 102 (Karen M. Strzyz, Managing Attorney).
_______

Before Grendel, Cataldo and Ritchie de Lorena,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On April 22, 2005, Mittal Steel Technologies, Ltd.
(applicant) filed an application to register the mark
MITTAL STEEL on the Principal Register in standard
characters for “land, air and sea transport services
provided by boat, ship, rail, tractor trailer and aircraft;
shipping of cargo and freight; storage of ore, metals and
alloys” in International Class 39; and “galvanizing
services for directly reducing iron; contract manufacturing
in the field of steel; steel tempering; steel casting;
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78979091
2
contract manufacturing in the field of metal; metal
tempering; metal casting” in International Class 40.
Applicant asserts a bona fide intention to use the mark in
commerce in connection with both classes of services as its
basis for registration. In response to a requirement by
the examining attorney, applicant has disclaimed STEEL
apart from the mark as shown.
The examining attorney has 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), and contended that applicant’s subsequent
showing of acquired distinctiveness under Section 2(f) of
the Trademark Act, 15 U.S.C. §1052(f), is insufficient to
overcome the refusal to register. When the refusal was
made final, applicant appealed. Applicant and the
examining attorney have filed main briefs on the case.1
While applicant’s amendment to assert a claim under
Section 2(f) is essentially a concession that its mark is
not inherently distinctive, we nonetheless will consider
the question, as argued by applicant in the alternative, of
whether the examining attorney has established that MITTAL

1 The involved application is the “child” of “parent” application
Serial No. 78615002 for the mark MITTAL STEEL reciting goods in
International Class 6.

Ser No. 78979091
3
STEEL is primarily merely a surname. See In re Leatherman
Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994). See also
TMEP §1212.02(b).
Refusal to Register Under Section 2(e)(4)
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. We must
decide on the facts of each case whether the mark at issue
is “primarily merely a surname” under the Act. See In re
Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652,
653 (Fed. Cir. 1985). The examining attorney bears the
initial burden to make a prima facie showing of surname
significance. See Id. If the examining attorney makes
that showing, then we must weigh all of the evidence from
the examining attorney and the applicant, to determine
ultimately whether the mark is primarily merely a surname.
See In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB
1994). If there is any doubt, we must resolve the doubt in
favor of applicant. See In re Benthin Management GmbH, 37
USPQ2d 1332, 1334 (TTAB 1995).
In Benthin, the Board identified five factors, four of
which are relevant here, to consider in determining whether
a mark is primarily merely a surname: (1) the degree of
Ser No. 78979091
4
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; and (4)
whether the mark has the “look and sound” of a surname.
Id. at 1332-33. Because applicant seeks registration of
MITTAL STEEL in standard character form, we need not
consider the fifth Benthin factor here, that is, whether
the manner in which the mark is displayed might negate any
surname significance.
Rareness
With the first Office action, the examining attorney
provided a summary and partial listing of 993 individuals
having “Mittal” as a surname, retrieved from a search of
the Lexis Nexis Combined Person Locator computer database,
restricted to the five year period between November 21,
2000 and November 21, 2005. The examining attorney further
submitted an advisory notice from his prior, unrestricted
search of Lexis Nexis for “Mittal” as a surname, indicating
that such search was “interrupted because it will return
more than 3000 results.”2 In addition, the examining
attorney provided a summary and partial listing of 493
individuals having “Mittal” as a surname, retrieved from a
search of the Yahoo! People Search computer database. The
Ser No. 78979091
5
record is silent as to the extent to which the 493
individuals listed in the Yahoo! search are duplicative of
the 993 listed in the Lexis Nexis search. Nonetheless,
even if we assume that results of the Yahoo! search are
completely duplicative of the Lexis Nexis search, there
would appear to be a minimum of 993 individuals with the
surname “Mittal” in the United States during the five year
period between November 2000 and November 2005. Moreover,
the examining attorney has submitted additional evidence
from the Lexis Nexis computer database indicating that
applicant is the largest steel producer in the world, and
that Mr. Lakshmi Mittal, applicant’s chairman and chief
executive officer, is one of the world’s wealthiest
individuals.
Based upon the above evidence of record, we conclude
that “Mittal,” is not an extremely rare surname as argued
by applicant, but rather is a rare surname. See In re
Gregory, 70 USPQ2d 1792 (TTAB 2004). Cf. In re Joint-Stock
Company “Baik”, 84 USPQ2d 1921 (TTAB 2007). Nonetheless, 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

2 November 21, 2005 Office action, Attachment 3.
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USPQ2d 589 (TTAB 1975); and In re Industrie Pirelli Societa
per Azioni, 9 USPQ2d 1564 (TTAB 1988).
Applicant’s Surname Use
As noted above, the examining attorney has made of
record evidence that the surname “Mittal” is associated
with applicant’s chairman and chief executive officer. In
addition, the examining attorney has made of record further
Lexis Nexis evidence indicating that Mittal is associated
with applicant’s chief financial officer, Mr. Aditya
Mittal.
Other Meanings
There is no evidence of record that “Mittal” has any
meaning, either in English or a foreign language.
Applicant asserts that “the purchasing public is more
likely to have become familiar with MITTAL steel products
and services than they are to know someone with the surname
‘Mittal.’”3 However, this argument is an amplification of
applicant’s contention, addressed below, that MITTAL STEEL
has acquired distinctiveness as a trademark, rather than an
argument that “Mittal” has any meaning beyond surname or
trademark significance. Nor does applicant’s evidence of

3 Brief, p. 4.

Ser No. 78979091
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acquired distinctiveness point to any other meaning of
“Mittal” in any language.
Look and Sound
Lastly, we must determine whether MITTAL STEEL has the
“look and sound” of a surname. We agree with the examining
attorney that the presence of the generic, disclaimed term
STEEL does not diminish the surname significance of MITTAL
in applicant’s mark. See In re Hamilton Pharmaceuticals,
Ltd., 27 USPQ2d 1939 (TTAB 1993). Further we are not
persuaded by applicant’s argument that the absence of
initials, apostrophes, or other indicia necessarily
diminishes the surname significance of applicant’s mark.
See, for example, In re Yeley, 85 USPQ2d 1150, 1154 (TTAB
2007)(“there is no per se rule that the addition of an
initial(s) to a surname means that the mark is
automatically primarily merely a surname. It depends on
the principal or ordinary significance of the term, and
that is a question of fact.”); and In re Taverniti, SARL,
225 USPQ 1263, 1264 (TTAB 1985)(“we must decide the issue
presented herein by considering all of the relevant facts
and circumstances peculiar to this case”).
While we acknowledge that this is a somewhat
subjective factor, we nonetheless agree with the examining
attorney that the term has the look and sound of a surname,
Ser No. 78979091
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especially since the record shows that there are nearly one
thousand individuals with the surname “Mittal;” that such
term has no readily recognized meaning other than its
surname significance; and that nothing in the record
indicates that “Mittal” would be perceived as an initialism
or acronym, or a coined term. Rather the term “appears to
be a cohesive term with no meaning other than as a
surname.” In re Gregory, supra, 72 USPQ2d at 1796.
Balancing the various factors, we find that the four
relevant factors bearing upon the issue herein favor a
determination that the primary significance of the mark
MITTAL STEEL to the purchasing public for applicant’s
services is that of a surname. We find, therefore, that
the examining attorney has presented evidence sufficient to
establish that applicant’s mark is primarily merely a
surname.
Applicant’s Evidence of Acquired Distinctiveness
While this appeal involves an intent-to-use
application, an intent-to-use applicant which has used its
mark on related goods or services may nonetheless file a
claim of acquired distinctiveness before filing an
amendment to allege use or statement of use if the
applicant can establish that, as a result of the
applicant’s use of the mark on other goods or services, the
Ser No. 78979091
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mark has become distinctive of the goods or services in the
intent-to-use application, and that this previously created
distinctiveness will transfer to the goods and services in
the intent-to-use application when use in commerce begins.
See In re Dial-A-Mattress Operating Corp., 240 F.3d 1341,
57 USPQ2d 1807 (Fed. Cir. 2001).
The Board has set forth the requirements for showing
that a mark in an intent-to-use application has acquired
distinctiveness:
The required showing is essentially twofold.
First, applicant must establish, through the
appropriate submission, the acquired
distinctiveness of the same mark in connection
with specified other goods and/or services in
connection with which the mark is in use in
commerce. All of the rules and legal precedent
pertaining to such a showing in a use-based
application are equally applicable in this
context…. Second, applicant must establish,
through submission of relevant evidence rather
than mere conjecture, a sufficient relationship
between the goods or services in connection with
which the mark has acquired distinctiveness and
the goods or services recited in the intent-to-
use application to warrant the conclusion that
the previously created distinctiveness will
transfer to the goods or services in the
application upon use.

In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999). See also
Trademark Manual of Examining Procedure (TMEP) §1212.09(a)
(4th ed. 2005).
Applying the standards enunciated herein, we begin by
looking at applicant’s claim of acquired distinctiveness in
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connection with the goods or services upon which the term
MITTAL STEEL has been used in commerce. The issue is
whether applicant’s use and promotion of MITTAL STEEL in
connection with these goods or services over a period of
time has been of such a nature and extent that the primary
significance of the term in the minds of the consuming
public is no longer primarily merely as a surname, but
rather as an indication of the source of such goods and
services. See In re McDonald's Corp., 230 USPQ 304 (TTAB
1986); and In re Advanced Spine Fixation Systems, Inc., 25
USPQ2d 1363 (TTAB 1992).
In this regard, applicant has submitted a declaration
with exhibits regarding use of MITTAL STEEL. In the
declaration, signed on December 21, 2006, applicant’s
director and financial controller, Shekhar Kumar Shara,
attests as follows:
applicant is the largest producer and manufacturer of
steel in the world, providing steel for numerous purposes
and related galvanizing, storage and manufacturing
services;
applicant, through its predecessors in interest, was
founded in 1989 and has been operating worldwide, including
in the United States, since early 2004;
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since applicant’s first use in early 2004 of its
MITTAL marks to the date of the declaration, sales of its
products and services in the United States have exceeded
$19.1 billion;
during the same time period, applicant has expended
$10 million on advertising and marketing its MITTAL marks
in the United States in major general circulation
newspapers and magazines as well as trade publications and
the internet;
applicant employs over 300,000 people in more than 60
countries;
applicant’s steel production represents approximately
10% of the world’s crude steel production; and
in 2005, applicant’s combined revenues were $77.5
billion.
As exhibits to its declaration, applicant submitted
excerpts of articles concerning applicant and its
activities under its MITTAL STEEL mark from The New York
Times, Washington Post, Wall Street Journal, Los Angeles
Times, and Forbes, retrieved from the Westlaw computer
database.
Applicant’s showing of acquired distinctiveness
demonstrates that it has made extensive use of MITTAL STEEL
as a trademark in numerous countries throughout the world,
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including the United States, since 2004. Applicant’s
showing further establishes that it has generated very
substantial revenues under the MITTAL STEEL mark in the
United States during that time and expended substantial
amounts in advertising expenditures as well. Further,
applicant’s evidence establishes that it has generated
significant media coverage for its goods and services under
the MITTAL STEEL mark in major newspapers and magazines in
the United States. These goods include various steel
products and the services include producing and
manufacturing steel as well as galvanizing and storage
services related thereto.
As noted above, the services identified herein
include: “land, air and sea transport services provided by
boat, ship, rail, tractor trailer and aircraft; shipping of
cargo and freight; storage of ore, metals and alloys” in
International Class 39; and “galvanizing services for
directly reducing iron; contract manufacturing in the field
of steel; steel tempering; steel casting; contract
manufacturing in the field of metal; metal tempering; metal
casting” in International Class 40. Applicant has
demonstrated that its MITTAL STEEL mark has acquired
distinctiveness for goods and services including
galvanizing, manufacturing and storage of steel products,
Ser No. 78979091
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which are included among the services recited therein.
Further, applicant’s transportation, shipping, tempering
and casting of iron and steel are related to the goods and
services for which applicant has demonstrated that its
MITTAL STEEL mark has acquired distinctiveness inasmuch as
they are related to the production and manufacturing of
steel products.
Accordingly, we find that applicant has established
acquired distinctiveness for its MITTAL STEEL mark when
used in association with the services which are the subject
of applicant’s application. See Trademark Rule 2.41(a).
The refusal to register on the Principal Register on
the basis that applicant’s mark is primarily merely a
surname under Section 2(e)(4) is affirmed. However, the
examining attorney’s refusal to register on the ground that
applicant has failed to prove the applied-for mark has
acquired distinctiveness under Section 2(f) of the
Trademark Act is reversed.