Peter Schottler GmbH

Trademark Trial and Appeal Board

Sep 28, 2012

No. 79092036 (T.T.A.B. Sep. 28, 2012)

Mailed: September 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
________

In re Peter Schöttler GmbH
________

Serial No. 79092036
Filed February 3, 2011
_______

Mark P. Stone, Esq.; Amanda L. Stone, Esq. on the brief,
for applicant.

Pamela Y. Willis, Law Office 106, Mary I. Sparrow, Managing
Attorney.
_______

Before Mermelstein, Wellington, and Wolfson, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant requests extension of protection for the
mark SCHÖTTLER (in standard characters) to be used on or in
connection with a variety of metal products, metalworking
and forging services, and engineering services in
International Classes 6, 40, and 42.1 The examining
attorney issued a final refusal to register, alleging that
the mark is primarily merely a surname. Trademark Act
§ 2(e)(4); 15 U.S.C. § 1052(e)(4).

1 Pursuant to Trademark Act § 66(a); 15 U.S.C. § 1114f(a), and
alleging a bona fide intent to use the mark in commerce.
Applicant is the holder of International Registration No.
1063656, issued September 20, 2010, claiming a priority date of
March 25, 2010.
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79092036

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We will reverse the refusal to register.
I. Applicable Law
Section 2(e)(4) of the Trademark Act prohibits
registration on the Principal Register if the proposed mark
is “primarily merely a surname.” The determination of
whether the primary significance of the designation at
issue is that of a surname is based on the facts made of
record. In re Etablissements Darty et Fils, 759 F.2d 15,
225 USPQ 652, 653 (Fed. Cir. 1985). The Examining Attorney
has the initial burden to make a prima facie showing of
surname significance. 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.
In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB
1994). If there is any doubt, we must resolve that doubt
in favor of applicant. In re Benthin Management GmbH, 37
USPQ2d 1332, 1334 (TTAB 1995).
In Benthin, we 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 the surname’s “rareness”;

2. Whether anyone connected with the applicant has
the involved term as a surname;

Serial No. 79092036

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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 1333. Because the mark at issue here is in standard
character form, we need not consider the fifth Benthin
factor, i.e., whether the manner in which the mark is
displayed might negate any surname significance.
II. Discussion
A. The Rareness of SCHÖTTLER
With her first Office action, the examining attorney
made of record results of a search on the website
www.whitepages.com. The results pages list — under the
words “Over 100 Results,” a number of people with the name
Schottler,2 as well as some vague information about each,
including a range for the listee’s age, and a street and
city (presumably of the person’s residence). According to
the examining attorney,
[t]his evidence shows the applied-for mark
appearing at least 100 times as a surname in a

2 Applicant points out that the examining attorney’s evidence
shows individuals with the last name “Schottler” and not
“Schöttler,” as in the applied-for mark. While we recognize the
difference made by the umlaut in the spelling and German
pronunciation of the name, it is unclear whether the relevant
U.S. consumers would see this spelling variation as significant.
We will assume, without deciding, that if Schottler is primarily
merely a surname, so is SCHÖTTLER; our decision would be the same
in either case.
Serial No. 79092036

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nationwide telephone directory of names (the
first 50 listings are attached). Given the
amount of evidence showing mark [sic] used as a
surname, consumers would immediately perceive
that the term Schöttler as used in the mark is
also used as a surname.

First Office action (Feb. 9, 2011).
In fact, this evidence shows only forty listings, and
as applicant points out, several of the listings appear to
be duplicates: there are two listings each for Ann M.
Schottler in Kentucky, Doreen Schottler in New Jersey, and
Frederick Schottler in White Plains, NY. In response to
the listing, and again in its brief, applicant argued that
the number of Schottlers listed in the examining attorney’s
evidence is insufficient to show that SCHÖTTLER is
primarily merely a surname.3
While the examining attorney is correct that there is
no minimum number of listings required to show surname
significance, In re Cazes, 21 USPQ2d 1796, 1797 (TTAB
1991), it is not the case that any number of listings will

3 Applicant argues that “[t]ypically, an Examiner is required to
demonstrate an ‘unusually large number’ of telephone directory
listings of the mark as a surname to carry the burden of proof.”
App. Br. at 4 (citing In re Harris-Intertype, Corp., 518 F.2d
629, 186 USPQ 238 (CCPA 1975)). Applicant is plainly incorrect.
The court in Harris-Intertype found that the “unusually large
number of listings” of record in that case was sufficient to
establish that the applied-for mark was primarily merely a
surname; the court did not say that an “unusually large number of
listings” was necessary to sustain such a refusal in all cases.
Harris-Intertype, 186 USPQ at 239.
Serial No. 79092036

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do, no matter how small. The issue is whether the surname
in question is common or rare, and in each case, the
rareness of the surname must be considered as a part of all
the record evidence pertaining to the Benthin factors.
Nonetheless, it is fair to say that the rareness of the
name at issue often plays an important role in determining
whether the proposed mark is primarily merely a surname.
E.g., In re Joint-Stock Co. “Baik”, 84 USPQ2d 1921, 1923-24
(TTAB 2007).
In this case, although the examining attorney states
that individuals named Schottler appeared “at least 100
times” in the results of her whitepages.com search, only
forty listings were submitted, even after applicant argued
that the listings were too few to support the § 2(e)(4)
refusal. (The estimate of “at least 100” listings appears
to be based on the whitepages.com notation of “Over 100
Results,” but we cannot tell whether that vague figure is
reliable or how many listings there actually were — and one
hundred listings is still a very small number resulting
from a national search.4) We cannot affirm a refusal to

4 Some of our cases have affirmed refusals with evidence of only
a very small number of listings. It should be kept in mind that
in many of the older cases, the listings typically came from
(paper) telephone directories for a few cities. While those
cases are still good law, it seems clear that unless the name is

Serial No. 79092036

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register based on evidence which is not of record,
particularly in light of the small number of listings
actually submitted and the fact that applicant has
questioned the sufficiency of those listings.
We find that the forty5 listings of record put
SCHÖTTLER in the category of very rare surnames,
particularly in the absence of any other evidence showing
that the public would recognize it as a surname
notwithstanding its rareness.6 See e.g., In re Gregory, 70
USPQ2d 1792, 1795 (TTAB 2004) (only 1100 directory
listings, but evidence of “publicity accorded to public
personalities with the name”).
This factor weighs strongly in applicant’s favor.
B. Applicant’s Connection with SCHÖTTLER
Applicant admits that its firm was founded in 1840 by

extremely rare, the search of a national database will likely
turn up more listings than the search of the phone books of a few
cities. See In re United Distillers plc, 56 USPQ2d 1220, 1221
(TTAB 2000).
5 While the submission of cumulative evidence is discouraged,
the value of this evidence lies not in the listed names, but in
their number. Although every single listing need not be
submitted, it remains the examining attorney’s burden to
demonstrate that the evidence supports the refusal of
registration, and submission of a very small number of listings
may prove inadequate to demonstrate that the name at issue is not
rare.
6 Although the examining attorney submitted a profile from the
Xing website of a person named Jan Schöttler, a graphic designer
and art director, this Mr. Schöttler apparently resides in
Munich, Germany, and there is no evidence that he is well-known
(or known at all) in the United States.
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a man named Peter Schöttler, but states that there is
nobody named Schöttler currently associated with the firm.
App. Br. at 4. The mere fact that applicant’s founder is
long gone is not necessarily a factor in applicant’s favor,
but there is no indication in this case that Mr. Schöttler
was a famous figure (or still is), or that the U.S. public
is even aware of him or the history of the firm. Nor does
it appear that those dealing with the firm would come into
contact with anyone named Schöttler.
Of course, applicant’s corporate name is Peter
Schöttler GmbH, and it seems likely that in that context —
preceded by the given name Peter — that the relevant public
would be somewhat more likely to view Schöttler as a
surname, but there is no evidence that applicant currently
does any business in or with the United States,7 or that the
firm is otherwise known in this country. In any event, we
must base our determination on the applied-for mark, which
is SCHÖTTLER, not Peter Schöttler.
While applicant’s firm was founded by someone named
SCHÖTTLER, we find that under the circumstances of this
case, this factor does not weigh heavily in our analysis.

7 As noted, applicant seeks registration under Trademark Act
§ 66(a). Such applicants need not show use in U.S. commerce
prior to registration. Id.
Serial No. 79092036

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C. Other Recognized Meanings
The examining attorney submitted two searches of
online dictionaries (one English, one German) for the term
“Schöttler.” Final Office Action (July 1, 2011). Inasmuch
as neither search found a definition for Schöttler, the
examining attorney argues that the term has no recognized
meaning other than that of a surname. Applicant does not
contend that Schöttler has some significance other than as
a surname, but argues that this evidence is somehow
“duplicative.” Reply Br. at 3-4. We are puzzled by
applicant’s argument — this evidence is clearly probative
of the third Benthin factor, and we agree with the
examining attorney that this factor weighs in favor of
affirmance.
D. Whether SCHÖTTLER has the Look and Sound of a
Surname

The examining attorney argues that SCHÖTTLER has the
look and sound of a surname:
The examining attorney submits that there are a
number of surnames used in the United States that
begin with the letters “Sch.” In addition, many
surnames used and heard in the United States
contain accent marks. Given that many surnames
used in the United States contain similar letter
sequences as the proposed mark, and also contain
accents, the American public would in fact
perceive SCHÖTTLER as a surname.

Ex. Att. Br. at 10 (unnumbered).
Serial No. 79092036

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This Benthin factor is somewhat subjective. In re
Binion, 93 USPQ2d 1531, 1537 (TTAB 2009). However, even
subjective determinations must be based on some evidence.
As applicant points out, the examining attorney has
submitted no evidence in support of her argument about
common surnames in the United States. See e.g., Baik, 84
USPQ2d 1921, 1924 (TTAB 2007) (evidence from Yahoo People
Search “to show that ‘more common’ surnames ... are similar
in appearance and sound”); In re Thermo LabSystems Inc., 85
USPQ2d 1285 (TTAB 2007) (“examining attorney’s evidence
from about.com shows that ... many surnames end with
‘son’”); In re Industrie Pirelli Societa per Azioni, 9
USPQ2d 1564, 1566 (TTAB 1988) (PIRELLI, though rare,
resembles common surnames in the American Surnames book).
While we agree that SCHÖTTLER could possibly be
perceived as a surname, that conclusion is not inevitable.
Applicant argues that “the American consumer is fairly
unfamiliar with words and names containing the letters
‘SCH’ and ‘Ö’, which are uncommon in the English language.
Accordingly, the American consumer is unlikely to recognize
the mark ‘SCHÖTTLER’ at all, let alone as a surname.” App.
Br. at 11. We conclude that in the absence of evidence to
support it, we are not able to give the examining
attorney’s unsupported opinion on this factor any weight.
Serial No. 79092036

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We conclude that this factor is essentially neutral.
III. Conclusion
In summary, we have found that SCHÖTTLER is a very
rare surname and that applicant’s founder was named Peter
Schöttler, although in this case, that latter factor is not
entitled to substantial weight. And while SCHÖTTLER has no
other apparent meaning, we are unable to conclude on this
record that the mark has the “look and sound” of a surname.
On balance, we find the degree of rareness of the
surname SCHÖTTLER to be a factor which weighs heavily in
favor of reversal,8 outweighing the fact that the mark has
no other meaning and that applicant’s founder was named
Schöttler. On this record, we conclude that the Office has
not met its burden to show that the mark is primarily
merely a surname.
Decision: The refusal to register on the ground that the
mark is primarily merely a surname is reversed.

8 In addition to our earlier discussion, we note Judge
Seeherman’s observation that “[i]f a 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.” Baik, 84 USPQ2d at
1924 (Judge Seeherman, concurring).