Okamoto Corp.

Trademark Trial and Appeal Board

Feb 6, 2015

No. 85739429 (T.T.A.B. Feb. 6, 2015)

This Opinion is not a
Precedent of the TTAB

Hearing: January 28, 2015 Mailed: February 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Okamoto Corp.
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Serial No. 85739429
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Robert W. Adams of Nixon & Vanderhye PC,
for Okamoto Corp.
Leigh A. Lowry, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
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Before Zervas, Lykos and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Okamoto Corp. (“Applicant”) has filed an application to register on the Principal
Register the mark OKAMOTO (in standard characters) for
leggings; tights; socks; stockings; trousers; panties; shorts
and briefs; sock suspenders; leg warmers; arm warmers;
thermal underwear; neck warmers; spats; garters;
waistbands; slippers; shoes; uniforms; wristbands in
International Class 25.1

1 Application Serial No. 85739429 was filed on September 26, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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The Trademark 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 OKAMOTO is primarily merely a surname.
Applicant has appealed the refusal. We reverse.
I. Evidentiary Matters
The Examining Attorney has objected to Applicant’s references in its brief to two
third-party registrations that are not of record in this proceeding. As the Examining
Attorney explained in the June 30, 2013 Office Action, merely referencing a
registration in response to an office action does not make that registration of record
in a Board proceeding. See, e.g., In re Compania de Licores Internacionales S.A., 102
USPQ2d 1841, 1843 (TTAB 2012) (mere listing of third-party registrations in brief
is insufficient to make them of record). Instead, an applicant must submit copies of
the registration, or the electronic equivalent from the USPTO’s automated systems,
prior to appeal. In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73. Applicant
could have done this in a request for reconsideration, but Applicant did not file one.
Accordingly, we sustain the Examining Attorney’s objection, and have not
considered Applicant’s references to the third-party registrations.
Applicant objected to the Examining Attorney’s submission of samples of
evidence from two Lexis databases, which will be discussed below. Applicant’s
objection is overruled. The Board generally does not require submission of all
articles that a search of such databases retrieves, and, in fact, prefers not to receive
every article when they are unnecessarily cumulative or not probative. See In re
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Homes & Land Publishing Corp., 24 USPQ2d 1717, 1718 (TTAB 1992) (unnecessary
for an examining attorney to submit all stories found in the Lexis/Nexis database,
particularly where there are a large number of them). Cf. In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1245-46 (TTAB 2010) (criticizing applicant for submitting
more than 300 pages of Internet material, much of which was duplicative or not
relevant).
II. Applicable Law
The test for determining whether a mark is primarily merely a surname is the
primary significance of the mark as a whole to the purchasing public. In re
Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988);
In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238 (CCPA 1975). The burden
is on the examining attorney to establish a prima facie case that a term is primarily
merely a surname. In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652,
653 (Fed. Cir. 1985). If the examining attorney makes that showing, then we must
weigh all of the evidence from the examining attorney and the applicant to
determine whether the mark is primarily merely a surname. See In re Sava
Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994).
The factors to be considered in determining whether a term is primarily merely
a surname are: (1) whether the surname is rare; (2) whether anyone connected with
applicant has that surname; (3) whether the term has any recognized meaning
other than that of a surname; (4) whether the term has the “look and feel” of a
surname; and (5) whether the manner in which the mark is displayed might negate
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any surname significance. In re Benthin Management Gmbh, 37 USPQ2d 1332,
1333 (TTAB 1995). See also Miller v. Miller, 105 USPQ2d 1615, 1619 (TTAB 2013);
In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009). Because OKAMOTO is in
standard character form, we need not consider the fifth Benthin factor here. In re
Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007).
A. Whether “Okamoto” is a Rare Surname
With respect to the first factor, the Examining Attorney submitted the first 100
of 738 entries of the surname “Okamoto” from the Lexis Public Records database.2
The evidence of 738 entries is not substantial evidence that the term “Okamoto” is a
common surname. In fact, it supports the finding that the surname “Okamoto” is a
fairly rare surname in the United States. See In re United Distillers plc., 56
USPQ2d 1220, 21 (TTAB 2000) (“Hackler” held to be a rare surname despite 1295
listings in phone directories). Based on the number of listings, we find “Okamoto” to
be a relatively rare surname.
However, the fact that a term is not a common surname does not per se mean
that a surname would not be considered to be primarily merely a surname. See In re
Giger, 78 USPQ2d 1405, 1408 (TTAB 2006). See also In re E. Martinoni Co., 189
USPQ 589, 5890 (TTAB 1975); and In re Industrie Pirelli Societa per Azioni, 9
USPQ2d 1564, 1566 (TTAB 1988). As this Board explained a few years ago,
“[r]egardless of the rarity of the surname, the test is whether the primary

2 February 15, 2013 and June 30, 2013 Office Actions.
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significance of the term to the purchasing public is that of a surname.” Binion, 93
USPQ2d at 1537.
In addition, as an attachment to her brief, the Examining Attorney submitted
pages from the Dictionary of American Family Names (2003) (“DAFN”) in which
“Okamoto” is listed as an American surname of Japanese origin. The Examining
Attorney has asked us to take judicial notice of this material. As the Board may
take judicial notice of dictionary definitions, we grant this request. See In re Red
Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006); see also University of Notre Dame
du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
The DAFN attachment contains the following entry:
Okamoto (772) Japanese: “(one who lives) at the base of a
hill.” This is found mostly in western and central Japan,
and the Ryuktu Islands.
The parenthetical number “772” provides further support for our finding that the
surname “Okamoto” is relatively rare in the United States.
The Examining Attorney also submitted excerpts from 33 articles from the Lexis
All News database showing use of “Okamoto” as a surname. As the Examining
Attorney explained in the June 30, 2013 Office Action, she limited the Lexis search
to a six month period because absent such a date restriction, the search would have
returned too many hits and could not complete. With the date restriction, the search
returned 2543 results. Of those, the Examining Attorney submitted 33 of the first
414 results, all of which are from June 2013.
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Six of the excerpts are from articles that mention the actress Tao Okamoto, who
costarred with the actor Hugh Jackman in the movie Wolverine, which was due to
be released in July 2013; two excerpts are from an article that mentions Sandra
Okamoto, a reporter for the Columbus Ledger Enquirer (Georgia) who hosted a
Ronald McDonald House fundraising event in Georgia, and from an article that she
authored about Miss Georgia; a few excerpts are from articles that mention Yoichi
Okamoto, who was the personal photographer to President Lyndon B. Johnson;
several excerpts are from articles that mention a golfer from the 1980s named
Ayako Okamoto; several excerpts are from articles from specialized new sources
such as Alzheimer’s Weekly, Science International, and Journal of Animal and Plant
Sciences that mention individuals with the surname “Okamoto”; several excerpts
are from articles from local papers concerning local news, such as the excerpt from
the San Jose Mercury News (California) that mentions 9-year old Ryan Okamoto,
who was a member of the Willow Glen all-star team, and one excerpt from the
Bellevue Reporter (Washington) that mentions Tyler Okamoto of Interlake High
School near Seattle, who received a Washington Federal STEM Scholarship; and
several other excerpts are from articles that mention other individuals with the
surname “Okamoto.”
The Examining Attorney relies on In re Gregory, 70 USPQ2d 1792 (TTAB 2004),
and characterizes this evidence as showing “the routine usage of the surname in the
media” which, she argues, supports the contention that “Okamoto” “is not
considered rare and would be perceived by the public as primarily merely a
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surname.”3 We do not agree. Most of the excerpts are overly truncated, and do not
provide sufficient context for us to determine whether the article is about a
particular individual with the surname “Okamoto,” or whether that individual’s
name is just mentioned as one of many in a list of graduating students or members
of a school team, for example, and would not be noticed. In addition, while six
excerpts mention the actress Tao Okamoto, we cannot determine whether she is an
actress of particular note with other articles written about her in the previous five
month period, or whether there were an unusual number of articles that mentioned
her name in June 2013 as part of the media hype surrounding the anticipated
release of the Wolverine movie in July 2013. Moreover, five of the six excerpts
appear to be from blogs with unknown exposure (Future News-Media Planner,
411mania.com, stupidDOPE, AdMedia and Styleite). Several others, such as DC
Daybook and Business Wire, mention professors or business people surnamed
“Okamoto”, but it is unclear whether the readership for any of these excerpts is
widespread, or more limited due to the subject matter. In short, taken as a whole,
the 33 excerpts do not reflect the type of uses that would outweigh the relative
rareness of this surname.
B. Whether “Okamoto” is the Surname of Anyone Connected with
Applicant
Applicant acknowledges, and the Examining Attorney emphasizes, that “the
application signatory and Applicant’s President is Mr. Tetsuji Okamoto.”4 We note

3 Ex. Atty. Br. at 6.
4 App. Br. at 9.
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Applicant’s argument that “there is no evidence whatsoever in the record that the
normal U.S. customer will ever know or ever see the name of Applicant’s
President.”5 However, our primary reviewing court teaches that a term that is the
surname of an individual who is associated with the applicant, such as an officer or
founder of the applicant, is evidence of the surname significance of the term. See
Darty et Fils, 225 USPQ at 653. That Tetsuji Okamoto is Applicant’s president
suggests that the public may recognize “Okamoto” as a surname. Miller, 105
USPQ2d at 1620-21.
C. Whether “Okamoto” has any Recognized Non-Surname Significance
The Examining Attorney submitted online search results from the Merriam-
Webster and American Heritage dictionaries to establish that there is no recognized
meaning of the term “Okamoto” in English. See, e.g., Darty et Fils, 225 USPQ at 653
(evidence that DARTY did not appear in dictionaries as a French or English word
supported prima facie case of surname significance). We recognize that the DAFN
entry discussed above suggests that “Okamoto” might mean something to Japanese
speakers, namely, “‘(one who lives)’ at the base of a hill.” However, it is unclear
whether the DAFN entry is a direct translation of the word “Okamoto” or whether,
as the Examining Attorney argues, it is simply the etymological origin of the name
“Okamoto.”6 The “Translation Statement” in Registration No. 3783093 for
OKAMOTO and Design, of which Applicant claims ownership, suggests the latter:

5 Id.
6 Ex. Atty. Br. at 11.
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“The term ‘OKAMOTO’ has no official Japanese translation as a word. However, the
term ‘oka’ means a ‘hill,’ and the term ‘moto’ means a ‘base.’”7 On this record, it is
not clear whether there is a recognized meaning of the term “Okamoto.”
D. Whether “Okamoto” has the “Look and Feel” of a Surname
While “Okamoto” looks like a Japanese word, on this record, we cannot
determine whether “Okamoto” has a clear “look and feel” as either that of a
surname, or an arbitrary term.
III. Conclusion
In view of the above, the Examining Attorney has not established that the
primary significance of OKAMOTO to the relevant purchasing public is that of a
surname. United Distillers, 56 USPQ2d at 1222. Although Benthin sets forth a
multi-factor test, the rarity of the surname is of particular importance in our
weighing of the factors. Accordingly, we conclude that the Office has not satisfied its
burden to establish that OKAMOTO is primarily merely a surname.
Decision: The refusal to register Applicant’s mark OKAMOTO is reversed.

7 There is no “Translation Statement” in the involved application.