SBE Hotel Licensing, LLC

Trademark Trial and Appeal Board

Jan 9, 2013

No. 85054771re (T.T.A.B. Jan. 9, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 9, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SBE Hotel Licensing, LLC
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Serial No. 85054771
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Request for Reconsideration
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Lee J. Eulgen and Sarah S. Smith of Neal Gerber & Eisenberg LLP for SBE Hotel
Licensing, LLC.

Dominick John Salemi, Trademark Examining Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).
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Before Holtzman, Zervas, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On December 27, 2012, applicant timely filed a request for reconsideration of
the Board’s final decision issued on November 27, 2012, wherein the Board affirmed
the refusal to register THE HENDRYX HOTEL under Section 2(e)(4) of the
Trademark Act on the ground that applicant’s mark is primarily merely a surname.
Generally, the premise underlying a request for reconsideration is that, based
on the evidence of record and the prevailing authorities, the Board erred in reaching
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the decision it issued. The request, however, should not be devoted simply to a
reargument of the points presented in the requesting party’s brief on the case.
Rather, the request should be limited to a demonstration that, based on the
evidence of record and the applicable law, the Board’s ruling is in error and requires
appropriate change. See TBMP § 543 (3d ed. rev. 1 2012).
Essentially, applicant disagrees with the result reached by the Board.
Applicant argues that the Board did not give proper weight to the factors to be
considered in determining whether a mark is primarily merely a surname or to the
legal authority cited by applicant. Motion for Reconsideration of Final Order
Affirming Final Refusal of Registration (“Request for Reconsideration”) at 1. We
have reviewed applicant’s arguments, but are not persuaded that there is any error
in our decision.
The factors to be considered in determining whether applicant’s mark is
primarily merely a surname are: (1) whether the surname is rare; (2) whether the
term is the surname of anyone connected with the applicant; (3) whether the term
has any recognized meaning other than as a surname; and (4) whether the term has
the “look and feel” of a surname. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332,
1333 (TTAB 1995).
Turning to the first factor, applicant argues that “Hendryx” is a rare and thus
registrable surname. Request for Reconsideration at 1, 2. The evidence shows that
the surname “Hendryx” indeed may be somewhat rare, but the record does not
establish that it is so rare that this factor should outweigh the others. The test
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under the Trademark Act remains whether the primary significance of the term to
the purchasing public is that of a surname, and even a rare surname is
unregistrable if its primary significance to purchasers is a surname. In re Industrie
Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) (stating “the
Examining Attorney is correct that even rare surnames may be unregistrable and
that there is no minimum number of directory listings required to establish a prima
facie case for refusal of registration”); In re E. Martinoni Co., 189 USPQ 589, 590
(TTAB 1975) (“The fact that ‘MARTINONI’ may be a rare surname does not entitle
it to treatment different from what would be accorded to a common surname when
no other meaning for the word is shown.”).
Applicant’s next argument concerns the second Benthin factor. The record
includes a declaration from applicant’s counsel stating that it is his understanding
that HENDRYX is not the surname of any person connected with the applicant.
Under Board precedent, the second Benthin factor is therefore neutral: “The fact [ ]
that ‘a proposed mark is not applicant’s surname, or the surname of an officer or
employee, does not tend to establish one way or the other whether the proposed
mark would be perceived as a surname.’” In re Thermo LabSystems Inc., 85
USPQ2d 1285, 1287 (TTAB 2007) (quoting In re Gregory, 70 USPQ2d 1792, 1795
(TTAB 2004)). Applicant argues that this factor is not neutral, but “refutes the
Examiner’s refusal and, hence, weighs in favor of registration of Applicant’s mark.”
Request for Reconsideration at 2. Applicant cites no authority in support of its
position, and we find no error in our view of this factor as neutral.
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Turning to the third Benthin factor, applicant does not dispute that there is
no recognized meaning of the term “hendryx” other than as a surname, but argues
that that fact does not support refusal of registration. Board precedent, however, is
to the contrary. In re Benthin Mgmt., 37 USPQ2d at 1333 (“The record is devoid of
any evidence that Benthin has any meaning other than that of a surname. Thus,
this third factor weighs in favor of a finding that BENTHIN and design would be
perceived as primarily merely a surname.”); see also In re Giger, 78 USPQ2d 1405,
1409 (TTAB 2006) (“None of these dictionary entries is for the term ‘Giger’ and we
cannot conclude that the term ‘Giger’ has any non-surname significance. Therefore,
this factor supports the surname significance of the term.”). The two cases
applicant cites in support of its argument merely confirm that while any non-
surname meaning is one factor in our analysis, the ultimate test remains the
primary significance of a term to the purchasing public. See In re BDH Two Inc., 26
USPQ2d 1556, 1558 (TTAB 1993); In re Garan Inc., 3 USPQ2d 1537, 1539 (TTAB
1987).
Under the final Benthin factor, applicant argues that undue weight has been
given to the structure and pronunciation, or “look and feel,” of the term HENDRYX.
Applicant does not address the census data it submitted showing more than 75,000
occurrences of the surnames “Hendricks” and “Hendrix,” each of which is among the
most popular 1,000 U.S. surnames and has the same structure and pronunciation
as “Hendryx.” We find no error in the weight given to the fact that the evidence
shows HENDRYX has the “look and feel” of a surname.
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Finally, applicant argues that the Board failed to resolve doubt in applicant’s
favor. While applicant is correct that doubt as to whether a term is primarily
merely a surname will be resolved in favor of an applicant, we discern no doubt on
this record that the primary significance of the term HENDRYX to the purchasing
public is that of a surname.
In view or the foregoing, applicant’s request for reconsideration is denied, and
the Board’s decision of November 27, 2012 stands.