P.J. Fitzpatrick, Inc.

Trademark Trial and Appeal Board

Jun 11, 2010

No. 77256618 (T.T.A.B. Jun. 11, 2010)

Hearing: Mailed:
January 19, 2010 June 11, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re P.J. Fitzpatrick, Inc.
________

Serial No. 77256618
_______

Timothy D. Pecsenye of Blank Rome LLP for P.J. Fitzpatrick,
Inc.

Kimberly Frye, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Kuhlke, Walsh and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

This appeal from the final refusal of the Trademark
Examining Attorney involves Section 2(e)(4) of the
Trademark Act of 1946, 15 U.S.C. §1052(e)(4), which
precludes registration of a mark that is “primarily merely
a surname.” P.J. Fitzpatrick, Inc. seeks to register the
mark P.J. FITZPATRICK, INC., in standard character form,
for “roofing services; installing siding; installation of
doors and windows; building construction services;
construction, maintenance and renovation of property;
installation of gutters and gutter systems,” in Class 37.
THIS OPINION IS A PRECEDENT
OF THE T.T.A.B.
Serial No. 77256618
2
The statute provides that registration should be
refused if the proposed mark is “primarily merely a
surname.” “Merely” is synonymous with “only,” and
“primarily” refers to “first in order” or “fundamentally.”
Thus, we must determine whether P.J. FITZPATRICK, INC. is
fundamentally only a surname. In re I. Lewis Cigar Mfg.
Co., 205 F.2d 204, 98 USPQ 265, 267 (CCPA 1953). We must
consider the mark as a whole (i.e., in its entirety) and
determine whether the addition of the initials “P.J.” and
the entity designation “INC.” to “FITZPATRICK” creates a
mark that is more than a surname: in other words, whether
these additions remove the subject matter at issue - -
P. J. FITZPATRICK, INC. - - from being primarily merely a
surname. It “is that impact or impression [how the mark is
perceived] which should be evaluated in determining whether
or not the primary significance of a word when applied to a
product is a surname significance. If it is, and it is
only that, then it is primarily merely a surname.” 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 1955). In other words, we must determine
the primary significance of P.J. FITZPATRICK, INC. to the
purchasing public. Michael S. Sachs Inc. v. Cordon Art
B.V., 56 USPQ2d 1132, 1136 (TTAB 2000).
Serial No. 77256618
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There is no doubt that FITZPATRICK alone is primarily
merely a surname. There is also no doubt that
P.J. FITZPATRICK, INC. is clearly more than just a surname.
However, the issue is whether the proposed mark, under the
law, is primarily (i.e., fundamentally) only a surname.
The law is settled that the mere addition to a surname of
an entity designation such as “INC.” does not transform the
surname into a mark. See Lewis Cigar, 98 USPQ at 267 (“the
addition of the expression ‘& Co’s.,’ whether it be the
abbreviated and possessive form present here, or in the
usual form, cannot be held to distinguish or relate to
anything except the surname ‘Seidenberg.’”). In contrast,
the addition to FITZPATRICK of the leading initials P.J. is
more significant. We note that a segment of American
society uses initials rather than given names.1 In this
regard, we many well-known people in a wide variety of
endeavors use initials in lieu of a given name. Examples
include: e. e. cummings, H.L. Mencken, W.C. Fields,
P.T. Barnum, H.R. Haldeman, H.L. Hunt, J.P. Morgan,

1 The Little Giant Encyclopedia of Names, p. 20 (1999; What’s In
A Name? . . . Everything You Wanted To Know, pp. 75-76 (1989).
The Board may take judicial notice of dictionaries and standard
reference works. B.V.D. Licensing Corp. v. Body Action Design
Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988)
(dictionary definitions and encyclopedias); Sprague Electric Co.
Electrical Utilities Co., 209 USPQ 88, 95 n.3 (TTAB 1980)
(standard reference works). Moreover, it is common knowledge
that some persons use initials in lieu of a given name.
Serial No. 77256618
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J.C. Penney, J.D. Salinger, E.G. Marshall, K.D. Lang,
C.C. Sabathia, T.S. Eliot, O.J. Simpson, I.M. Pei,
Y.A. Tittle, P.J. O’Rourke and P.J. Carlesimo. We find
that in this case the initials P.J. coupled with
FITZPATRICK would be perceived as the given name. Thus,
P.J. FITZPATRICK, INC. cannot be primarily merely a surname
because it comprises an entire personal name, not “merely”
a surname.
In Lewis Cigar, the court essentially stated that
there should be no distinction between marks consisting of
two initials coupled with a surname and marks consisting of
a given name coupled with a surname, in terms of finding
one coupling to be primarily merely a surname and the other
not. The court discussed earlier cases involving “ANDRE
DALLIOUX,” which was allowed to register, and “J C
HIGGINS,” which was denied registration because it was
found to be primarily merely a surname. The court went on
to note, “it seems to us that the initials in the Higgins
mark should have received equal consideration to that given
‘Andre’ in the Dallioux mark. We strongly doubt that
Congress intended such a decisive distinction to be made
between initials and given names in determining whether a
mark is primarily merely a surname.” 98 USPQ at 267.
Although the Board, in certain recent decisions, has held
Serial No. 77256618
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that particular marks consisting of initials coupled with a
surname are not primarily merely surnames, see In re Yeley,
85 USPQ2d 1150 (TTAB 2007) (J. J. YELEY) and Michael S.
Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132 (TTAB 2000)
(M.C. ESCHER), in view of the statements by the court in
Lewis Cigar, we hereby clarify that, if a mark consists of
two initials (or more) coupled with a surname, it typically
will convey a commercial impression of a personal name, and
thus generally will not be primarily merely a surname.
Moreover, we note that in Lewis Cigar, the court did
not find as a matter of law that a single initial added to
a surname could never convey something other than surname
significance. Based on the facts of the case before it,
the court made the following finding:
It seems to us that “Seidenberg” is
clearly a surname which can have no
other meaning or significance than that
of a surname. Nor do we believe that
the addition of the single initial is
sufficient to remove it from that
category.

Lewis Cigar, 98 USPQ at 267. As we explained in Yeley,
“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”
based on the facts made of record. Yeley, 85 USPQ2d at
Serial No. 77256618
6
1154; In re Etablissements Darty et Fils, 759 F.2d 15, 225
USPQ 652, 653 (Fed. Cir. 1985) ("with respect to issues of
fact, no precedential value can be given to the quantum of
evidence apparently accepted in a prior case"). Thus,
Lewis Cigar does not preclude a finding that the addition
of a single initial creates the commercial impression of a
personal name rather than a surname where the facts in the
record support such a finding.
In this case, there are two initials, not one initial,
and, as indicated above, a segment of society uses multiple
initials in lieu of given names, a fact not before the
court in Lewis Cigar. See Brooks v. Creative Arts By
Calloway LLC, 98 USPQ2d 1823, 1828-1829 (TTAB 2010) (“A
personal name mark, unless it is primarily merely a
surname, is registrable on the Principal Register without a
showing of secondary meaning, and thus is deemed to be
inherently distinctive under the Lanham Act if the record
shows that it is used in a manner that would be perceived
by purchasers as identifying the services in addition to
the person).
Judge Seeherman explained, in In re Piquet, that the
1946 Trademark Act changed the prohibition against
registering names to one against registering marks that are
Serial No. 77256618
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primarily merely surnames and that the Commissioner and
courts were slow to enact that change:
The “Seidenberg” case was an early
decision interpreting Section 2(e)(3)
[now Section 2(e)(4)] of the Trademark
Act of 1946. Under the former Act of
1905, registration of marks consisting
of the names of individuals and, by
interpretation, surnames as being the
significant portion of an individual’s
name, was prohibited. Section 5 of the
Trademark Act of 1905, Ex Parte
Dallioux, 83 USPQ 262 (Comr. Pats.
1949). It appears some of the general
reluctance to register surnames and
individual names under the previous Act
had a residual influence, and the Court
accordingly interpreted the
restrictions of Section 2(e)(3)
broadly.

In re Piquet, 5 USPQ2d 1367, 1368 (TTAB 1987)(Seeherman,
J., dissenting).
Furthermore, the U.S. Court of Appeals for the
District of Columbia Circuit in the J C HIGGINS case did
not rule as a matter of law that initials added to a
surname cannot alter the significance of a surname for
purposes of determining whether that mark is primarily
merely a surname, or may be primarily something else (i.e.,
a personal name). The appeals court noted that the
district court had ruled without considering applicant’s
evidence offered to show that purchasers and customers
considered the initials significant and further noted that
Serial No. 77256618
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considering the evidence would not change the result. In
re Sears, Roebuck & Co., 204 F.2d 32, 96 UPSQ 360, 361 n.3.
Moreover, the weight of authority construing the surname
provision of the Trademark Act since Sears, Roebuck
suggests that the decision perhaps unduly emphasized the
surname in the mark J C HIGGINS, by dissecting the mark and
discounting the impact of the initials J C. Certainly the
Court of Customs and Patent Appeals in Lewis Cigar noted
the perhaps odd result in the Sears, Roebuck case, vis-à-
vis the intent of Congress.
As stated at the beginning of this decision, 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 Harris-Intertype Corp.,
186 USPQ at 239; see also In re Hutchinson Technology,
7 USPQ2d 1490, 1492 (TTAB 1988) (a mark sought to be
registered must be considered in its entirety). The
observation by the CCPA in Lewis Cigar about the
discrepancy between the holdings in Sears, Roebuck (J C
HIGGINS) and Dallioux (ANDRE DALLIOUX), strongly suggests
that the coupling of two initials and a surname creates a
full name and therefore a registrable mark.
In view of the foregoing, we hold that the mark
P.J. FITZPATRICK, INC. is not primarily merely a surname.
Serial No. 77256618
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Decision: The refusal to register applicant’s mark on
the ground that it is primarily merely a surname is
reversed.