Remington Products Co.

Trademark Trial and Appeal Board

Feb 3, 1998

No. 74509840 (T.T.A.B. Feb. 3, 1998)

Paper No. 16
EWH/CCR
THIS DISPOSTION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 2/3/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Remington Products Company
________
Serial No. 74/509,840
_______
Allen S. Lipson for Remington Products Company
Elizabeth A. Dunn, Trademark Examining Attorney, Law Office
109 (Deborah S. Cohn, Managing Attorney)
_______
Before Hanak, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Remington Products Company (applicant) seeks
registration of REMINGTON in typed capital letters for
"computers, laptop computers, word processors, electronic
learning devices; namely hand-held computers, audio
products; namely video tape recorders, camcorders,
televisions and telecommunications machines; namely,
telephones and telephone answering machines." The intent-
to-use application was filed on April 7, 1994.
Ser No. 74/509840
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In her first office action, the Examining Attorney
refused registration pursuant to Section 2(e)(4) of the
Lanham Trademark Act on the basis that applicant’s mark
REMINGTON "is primarily merely a surname." In support of
her refusal, the Examining Attorney referenced the PHONEDISC
U.S.A. database (1994 ed.) showing that out of over 76
million listings, there were approximately 1900 individuals
with the surname REMINGTON. However, in that first office
action, the Examining Attorney went on to note that the
"applicant may register a surname under Trademark Act
Section 2(f) … by establishing acquired distinctiveness.
The applicant may present any of the following to establish
distinctiveness. (1) The applicant may rely on a claim of
ownership of one or more prior registrations on the
Principal Register for a mark which is the same as the mark
in this application for the same or related goods…."
In response, applicant noted that its trademark
REMINGTON is not the surname of any particular individual,
and that its mark REMINGTON was in fact "coined." Thus,
applicant contended that the foregoing prevents "the mark
[REMINGTON] from being primarily merely a surname." In the
alternative, applicant claimed the benefits of Section 2(f)
as suggested by the Examining Attorney by referencing many
of its existing registrations of REMINGTON.
Ser No. 74/509840
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In her second office action, the Examining Attorney
maintained that REMINGTON was primarily merely a surname.
With regard to applicant’s 2(f) claim, the Examining
Attorney acknowledged that "the applicant owns 23 current
REMINGTON registrations" covering a very wide array of goods
including in particular the following: calculating
machines; facsimile machines and parts thereof; radios; and
pens and pencils.
However, the Examining Attorney rejected applicant’s
section 2(f) claim stating that "none of these goods
[covered by the existing REMINGTON registrations] are
closely related to the computer products, videotape
recorders, camcorders, televisions, telephones and telephone
answering machines that are covered by the instant
application."
When the refusal was made final, the applicant appealed
to this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
Considering first whether REMINGTON is primarily merely
a surname, we find that this is a very close question. In
deciding whether REMINGTON is primarily a surname, there are
three objective factors to be considered. In re Benthin
Management, 37 USPQ2d 1332 (TTAB 1995). One factor to be
considered is whether REMINGTON has any "recognized meaning
other than that of a surname." 37 USPQ2d at 1333. While
Ser No. 74/509840
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applicant claims that REMINGTON is "coined," by the same
token, applicant has not provided any evidence suggesting
that REMINGTON has any other meaning. Thus, this factor
weighs in favor of finding that REMINGTON is primarily
merely a surname.
A second factor to be considered is whether there is
anyone connected with applicant who has the surname
REMINGTON. Applicant has stated that REMINGTON is not the
name of any particular individual. While this is not an
explicit statement that there is no one by the name of
REMINGTON associated with applicant, we find that it is an
implicit statement, especially because the Examining
Attorney never inquired further of applicant as to whether
there was anyone associated with applicant whose name was
REMINGTON. Thus, this second factor weighs in favor of
finding that REMINGTON is not primarily merely a surname.
Finally, the third objective factor in determining
whether REMINGTON is primarily merely a surname is "the
degree of [its] rareness." 37 USPQ2d at 1333. While at
first blush the existence of 1900 individuals with the
surname REMINGTON would suggest that this surname is by no
means rare, by the same token, it must be remembered that
the database from which these 1900 individuals were located
consists of over 76 million people. Hence, we find that
while REMINGTON is by no means a decidedly rare surname, by
Ser No. 74/509840
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the same token, it is by no means a common surname. Thus,
this third factor is neutral.
In summation, we find, as previously noted, that the
question of whether REMINGTON is primarily merely a surname
is an extremely close one. Under such circumstances, even a
very modest showing pursuant to Section 2(f) would be
sufficient to establish that REMINGTON has become something
other than primarily merely a surname.
As previously noted, the Examining Attorney has
acknowledged that there are 23 existing registrations of
REMINGTON owned by applicant, one of which dates to 1939.
While a number of these registrations cover goods which are
in no way related to the goods for which applicant now seeks
to register REMINGTON, some of the registrations cover goods
which are clearly related to the goods of the present
application. As noted before, these goods include
calculating machines, which are clearly related to
computers; radios, which are clearly related to televisions;
and facsimile machines which are telecommunications machines
and hence are clearly related to telephones and telephone
answering machines. Moreover, neither Trademark Rule
2.41(b) nor case law supports the Examining Attorney’s
contention that the goods of the existing registrations must
be "closely related" to the goods of the pending
application. (Examining Attorney’s brief page 9, emphasis
Ser No. 74/509840
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added). Trademark Rule 2.41 reads, in pertinent part, as
follows: "In appropriate cases, ownership of one or more
prior registrations on the Principal Register or under the
Act of 1905 of the same mark may be accepted as prima facie
evidence of distinctiveness." This Board allowed, pursuant
to Section 2(f), registration of the surname LYTLE for
"brochures, catalogs and bulletins" based on the fact that
applicant owned an existing registration of the same mark
for the services of "planning, preparation and production of
technical publications." In re Lytle Engineering, 125 USPQ
308 (TTAB 1960). In so doing, the Board stated as follows:
"Considering the obvious relationship between the services
identified in applicant’s registration and the goods for
which it seeks registration herein, it is concluded that a
prima facie showing of distinctiveness has been made." 125
USPQ at 309 (emphasis added). If anything, the
aforementioned goods of applicant’s prior registrations bear
more of an "obvious relationship" to applicant’s current
goods than did the services and goods set forth in Lytle
Engineering.
Ser No. 74/509840
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Decision: The refusal to register is reversed.
E. W. Hanak
G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 74/509840
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