R. J. Mears LLC

Trademark Trial and Appeal Board

Oct 31, 2005

No. 78273336 (T.T.A.B. Oct. 31, 2005)

Mailed:
October 31, 2005
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re R.J. Mears LLC
(by change of name from Nanovis LLC)1
________

Serial No. 78273336
_______

Michael J. Bevilaqua and Barbara A. Barakat of Wilmer Cutler
Pickering Hale and Dorr LLP for R.J. Mears LLC.

Brendan D. McCauley Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
R.J. Mears LLC seeks registration on the Principal
Register of the mark MEARS (standard character drawing) for
goods identified in the application, as amended, as
“semiconductor materials, namely group IV semiconductors,
group III-V semiconductors, group II-VI semiconductors and
compound, modified and enhanced semiconductors used in the

1 This application was assigned from Nanovis LLC to R.J. Mears
LLC as a result of a change of name executed one week after the
filing date herein. This name change of July 18, 2003 was
recorded with the Assignment Division of the United States Patent
and Trademark Office on August 5, 2003, at Reel 2694, Frame 0936.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78273336
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manufacture of semiconductor chips and semiconductor
devices; semiconductor circuits,” in International Class 9.2
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation under Section 2(e)(4) of the
Trademark Act, 15 U.S.C. Section 1052(e)(4), because the
proposed mark is primarily merely a surname.
Applicant and the Trademark Examining Attorney
submitted briefs. Applicant did not request an oral
hearing.
We affirm the refusal to register.
In support of the surname refusal, the Trademark
Examining Attorney has made of record the following:
evidence from the Lexis/Nexis USFIND database showing
surname significance of the term MEARS; portions of thirty
articles found in a computerized search of the term MEARS;
four third-party registrations in which the term MEARS is
registered on the Supplemental Register, a webpage from
www.RootsWeb.com showing that MEARS is a surname; and an
excerpted webpage from www.yourdictionary.com showing no
entry for the word MEARS.

2 Application Serial No. 78273336 was filed on July 11, 2003
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
Serial No. 78273336
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Applicant argues that the Trademark Examining Attorney
has failed to establish a prima facie surname case.
Applicant challenges the Trademark Examining Attorney’s
conclusion that the purchasing public would perceive the
mark as primarily merely a surname. Applicant argues that
the name MEARS is a rare surname, that it does not have the
look and feel of a surname, that the best case for the
Trademark Examining Attorney’s position is that persons
named MEARS “represents 0.00017461 or 0.01% of the total
United States population,” and that the third-party
registrations on the Supplemental Register are not
persuasive.
The test for determining whether a mark is primarily
merely a surname is the primary significance of the mark to
the purchasing public. See In re Hutchinson Technology
Inc., 852 F.2d 552, 554, 7 UPQ2d 1490, 1492 (Fed. Cir.
1988), citing In re Kahan & Weisz Jewelry Mfg. Corp., 508
F.2d 831, 184 USPQ 421 (CCPA 1975) and In re Harris-
Intertype Corp., 518 F.2d 629, 186 USPQ 238 (CCPA 1975).
The initial burden is on the Trademark Examining Attorney to
establish a prima facie case that a mark is primarily merely
a surname. See In re Etablissements Darty et Fils, 759 F.2d
15, 16, 225 USPQ 652, 653 (Fed. Cir. 1985). After the
Serial No. 78273336
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Trademark Examining Attorney establishes a prima facie case,
the burden shifts to the applicant to rebut this finding.
The Board, in the past, has considered several
different factors in making a surname determination under
Section 2(e)(4): (i) the degree of surname rareness; (ii)
whether anyone connected with applicant has the surname;
(iii) whether the term has any recognized meaning other than
that of a surname; and (iv) the structure and pronunciation
or “look and feel” of the surname. In re Benthin Management
GmbH, 37 USPQ2d 1332 (TTAB 1995).
There is no doubt but that the Trademark Examining
Attorney has met his initial burden of establishing that
MEARS is primarily merely a surname. In particular, the
Trademark Examining Attorney has presented evidence of
almost five thousand MEARS surname references from the
Lexis/Nexis USFIND database, along with proof that the word
“Mears” does not appear in a website known as
www.yourdictionary.com, an online, English-language
dictionary. The Court of Appeals for the Federal Circuit
has held that this type of evidence is sufficient to
establish a prima facie surname case. See Hutchinson
Technology, 852 F.2d at 554, 7 USPQ2d at 1492; Darty, 759
F.2d at 16, 225 USPQ at 653; see also 2 J. Thomas McCarthy,
Serial No. 78273336
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MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, §13.30, p. 13-50 (4th
ed. 2001).
The Trademark Examining Attorney’s Lexis/Nexis USFIND
evidence is collected from telephone directories and address
books across the country. There is no magic number of
directory listings required to establish a prima facie
surname case. In re Gregory, 70 USPQ2d 1792 (TTAB 2004); In
re Cazes, 21 USPQ2d 1796, 1797 (TTAB 1991); In re Industrie
Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988),
aff’d unpublished decision No. 89-1231, 883 F.2d 1026 (Fed.
Cir. 1989). Based on the more than five thousand MEARS
surname references in the USFIND database, we conclude that
a significant number of people in the United States have the
surname “Mears.”3
We note that applicant dismisses the five thousand
listings from the USFIND database as representing
“… 0.00017461 or 0.01% of the total United States

3 We point out that the evidence in this case is far more
extensive than that in cases where a surname was considered rare
and therefore registrable. See e.g. Kahan & Weisz, 508 F.2d at
832, 184 USPQ at 422 (six DUCHARME surname telephone directory
listings); In re Sava Research Corp., 32 USPQ2d 1380 (TTAB
1994)(one hundred SAVA surname telephone directory listings);
Benthin Management, 37 USPQ2d at 1333 (one hundred BENTHIN surname
telephone directory listings); In re Garan, Inc., 3 USPQ2d 1537
(TTAB 1987)(six GARAN telephone directory listings and one NEXIS
listing). In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000)
[single listing of HACKLER in the Manhattan directory and three
unique listings in Washington DC metro directories].
Serial No. 78273336
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population.” However, we find this “percentage-of-the-
entire-population” argument to be a hollow reed. The rich
diversity of surnames in this country is amply reflected in
the USFIND computer database evidence. If one were to take
a statistical measurement of this database for common names
like “Smith” or “Jones,” each would constitute a relatively
small fraction of the total database content. Gregory,
supra at 1795.
As to the second Benthin factor, there is no clear
evidence in this record that someone with the surname MEARS
is associated with applicant.4 Thus, based on the evidence
currently in this record, this factor is neutral.
The third factor we consider is whether the term has a
recognized meaning other than that of a surname. The
Examining Attorney has submitted dictionary evidence to show
that MEARS is not listed as a word in a dictionary, thus
indicating that it has no non-surname meaning. Further, the
Examining Attorney has made of record thirty articles found
in the Trademark Examining Attorney’s computerized search of
the term “Mears.” These excerpts show that people with the

4 In this regard, we do note that the instant application was
assigned from Nanovis LLC, the originally named applicant, to
R.J. Mears LLC, as a result of a change of name (executed on July
18, 2003, exactly one week after the filing date herein). Neither
applicant nor the Trademark Examining Attorney has discussed
whether this “R.J. Mears” trade name might be connected in any way
to an actual person associated with R.J. Mears LLC.
Serial No. 78273336
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surname “Mears” have been prominent in the world of
automobile racing. For example, excerpts mention Casey
Mears, a budding, top-tier NASCAR racer, who is emulating
the success of his uncle, Rick Mears, a four-time
Indianapolis 500 winner. The publicity regarding these
individuals with the surname MEARS indicates that the public
will view the term as a surname. In re Gregory, supra.
In the face of this showing, applicant has failed to
demonstrate that the term MEARS has another non-surname
meaning. At most, applicant has contended in its brief that
the word “Mears” “appears to be an invented term, possibly
derived from other terms.” Appeal brief, pp. 4 and 7.
However, applicant’s counsel has not explained this argument
further, and has certainly not given any terms from which
MEARS might have been derived, and which would be apparent
to consumers. Both the Benthin decision and our primary
reviewing Court clearly require that any other meaning must
be “recognized” by a significant number of people. See
Harris-Intertype, supra; Benthin, supra; see also In re
United Distillers plc, supra [the record shows that
“hackler” also means someone who practices the hackler’s
trade]. As noted above, applicant herein has not even
identified any remote or obscure meanings for this term.
Serial No. 78273336
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Thus, on this point, applicant has failed to rebut the
Trademark Examining Attorney’s prima facie surname case.
We consider next whether MEARS has the structure and
pronunciation – or the “look and feel” – of a surname. In
re Industrie Pirelli, 9 USPQ2d at 1566. If a term does not
have the look and feel of a surname, such that consumers are
likely to view it as something other than a surname, it
would not be primarily merely a surname. On this factor,
contrary to applicant’s contention, it is our view that
“Mears” would be perceived only as a surname. It has the
structure and pronunciation of such surnames as Meers, Miers
or Myers. See Garan, 3 USPQ2d at 1538. This too contrasts
with In re United Distillers plc, supra, cited by applicant
[HACKLER used in connection with alcoholic beverages will
not be perceived as primarily merely a surname because this
term does not have the clear “look and feel” of a surname].
Decision: The refusal to register the term MEARS under
Section 2(e)(4) of the Act is hereby affirmed.