Sikorsky Aircraft Corporation

Trademark Trial and Appeal Board

Aug 25, 2006

No. 78221800 (T.T.A.B. Aug. 25, 2006)

Mailed: August 25, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sikorsky Aircraft Corporation
________

Serial No. 78221800
_______

Barry L. Kelmachter of Bachman & LaPointe, P.C. for Sikorsky
Aircraft Corporation.

Chrisie Brightmire King, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Holtzman and Drost, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Sikorsky Aircraft
Corporation to register the mark SIKORSKY (in standard character
form) for the following goods, as amended:1
Sports knives; and multi-function hand tools
comprised of screwdrivers, knives, and can openers,
in International Class 8.

Interactive video game programs; pre-recorded video
tapes and cassettes about helicopters; computer mouse
pads; calculators; magnets; laptop computer carrying

1 Application Serial No. 78221800, filed June 27, 2005, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78221800
2
cases; and video game cartridges and discs, in
International Class 9.

Pins being jewelry, tie tacks, pendants, bracelets,
earrings, costume earrings, flag pins being jewelry,
watches, clocks; alarm clocks; mantel clocks;
collectable coins, commemorative coins, non-monetary
coins, in International Class 14.

Lunch bags; books relating to helicopters; history
books; children's books; sticker books; color books;
posters; prints; framed posters; framed photographs;
photographs; notepads; calendars; pens; pencils; desk
sets; desktop business card holders; stationery-type
portfolios; decals; postcards; bumper stickers; and
impression stamps, in International Class 16.

Umbrellas; tote bags; duffel bags; all purpose sports
bags; attaché cases; leather briefcases; back packs;
and luggage, in International Class 18.

Portable beverage coolers; mugs; cups; drinking
glasses; travel mugs; and plastic water bottles sold
empty, in International Class 21.

Apparel, namely T-shirts for men, women, and
children, sweatshirts, baseball shirts, collared
sports shirts, turtleneck jerseys, oxford shirts,
denim shirts, wind shirts, wind-resistant jackets,
jackets, sweaters, fleece shirts, fleece vests,
pullovers, vests, denim jackets, parkas, leather
jackets, flight jackets, aviator jackets, bibs
overalls; headgear, namely baseball caps, and
children's hats, in International Class 25.

Ornamental novelty buttons; cloth patches for
clothing, in International Class 26.

Toy model vehicles and related accessories sold as a
unit; radio controlled toy helicopters, toy
helicopter building sets, toy helicopters and related
accessories sold as a unit, flying boat float toys,
dolls, plush toy bears, plush toy helicopters, kites,
hand held units for playing video games, board games,
jigsaw and manipulative puzzles; golf balls; golf
club covers; golf bags; and Christmas tree ornaments,
in International Class 28.
Serial No. 78221800
3
Applicant has claimed ownership of Registration No. 2142914
of the mark SIKORSKY for "aircraft, namely, airplanes and
helicopters" based on a claim of acquired distinctiveness under
Section 2(f) of the Trademark Act;2 and Registration No. 2873223
of the mark SIKORSKY SUPPORT SERVICES, INC. and design (SUPPORT
SERVICES, INC. disclaimed) for various services relating to
aircraft and helicopters.3
The trademark examining attorney refused registration under
Section 2(e)(4) of the Trademark Act on the ground that SIKORSKY
is primarily merely a surname. When the refusal was made final,
applicant appealed. Both applicant and the examining attorney
have filed briefs. An oral hearing was not requested.
The examining attorney argues that SIKORSKY is primarily
merely a surname, albeit a rare one. The examining attorney
contends that SIKORSKY is the surname of Igor Sikorsky,
applicant's founder; that the term has no meaning in ordinary
language; and that by its nature, the term has only surname
significance. To support her position, the examining attorney
points to applicant's prior registration of SIKORSKY which
issued under Section 2(f) of the Trademark Act and an entry from

2 Issued March 10, 1998; Section 8 affidavit accepted; Section 15
affidavit acknowledged.

3 Issued August 17, 2004.
Serial No. 78221800
4
Wikipedia, an online encyclopedia (en.wikipedia.org), for
"Sikorsky Aircraft Corporation" which states:4
Sikorsky Aircraft Corporation
(Redirected from Sikorsky)

Sikorsky is an American helicopter manufacturer
founded in 1923 by Russian born American Igor
Sikorsky, the inventor of the first successful
helicopter design, upon which the majority of
subsequent helicopters were based (though he did not
invent the helicopter itself). The company is now a
subsidiary of United Technologies Corporation, but
remains one of the leading helicopter manufacturers,
producing such well-known models as the UH-60 Black
Hawk...

Applicant argues that the examining attorney has failed to
establish a prima facie case that SIKORSKY is primarily merely a
surname, contending that the examining attorney has provided no
evidence that there are a large number of individuals in the
United States which have the surname or that consumers would
view the mark as primarily merely a surname. According to
applicant, "the conclusion to be drawn from the absence of such
readily available information is that the surname Sikorsky is
indeed a rare one." Applicant states on page 4, footnote 1, of
its brief, "If one conducts a People Search on Yahoo.com, one
finds that in the entire U.S. there are only 113 telephone
listings for people having the last name Sikorsky." Applicant
did not attach a printout of the listings.

4 The accuracy of the information contained in this reference has not
been disputed.
Serial No. 78221800
5
Applicant also argues that the facts in this case are
"virtually identical" to those in In re Pyro-Spectaculars Inc.,
63 USPQ2d 2022 (TTAB 2002) (finding that SOUSA, when used in
connection with fireworks, would be viewed as the name of the
famous historical figure John Philip Sousa). Applicant contends
that the consuming public will associate the mark SIKORSKY with
either "a particular deceased individual, Igor Sikorsky" who was
"famous for creating helicopters," or with "Appellant, the well
known national company who manufactures helicopters." Brief,
pp. 5, 6. Applicant introduced pages from three third-party
websites: www.aero-web.org, entitled "Aviation Enthusiast
Corner," showing various models of "Sikorsky" helicopters and
the museums where they can be found; www.aircraft-charter-
world.com describing an available Sikorsky charter aircraft; and
www.rotorhead.org regarding specifications for the UH-60 Black
Hawk helicopter. Applicant also submitted an entry from an
online encyclopedia, www.nationmaster.com, which contains
information similar to that found in the Wikipedia reference, as
well as information about the various models of "Sikorsky"
aircraft.5

5 The above evidence was timely submitted prior to appeal. The
evidence attached to applicant's reply brief is untimely and has not
been considered. See Trademark Rule 2.142(d).

Serial No. 78221800
6
Applicant contends that "Sikorsky" also refers to
"Sikorsky Bridge" located in Connecticut and has introduced a
page from www.bergerlehman.com discussing plans for expansion of
the bridge. As to its prior registration under Section 2(f),
applicant argues that the registration "evidences the long and
exclusive use of the mark" and "does not demonstrate that the
consuming public today views the subject mark as being primarily
a surname." (Emphasis in original.)
A term is primarily merely a surname if, when viewed in
relation to the goods or services for which registration is
sought, its primary significance to the purchasing public is
that of a surname. See In re United Distillers plc, 56 USPQ2d
1220 (TTAB 2000). Among the factors to be considered in
determining whether a term is primarily merely a surname are (1)
the degree of a surname's rareness; (2) whether anyone connected
with applicant has that surname; (3) whether the term has any
recognized meaning other than that of a surname; and (4) whether
the term has the "look and sound" of a surname. See In re
United Distillers plc, supra.
We emphasize that the burden is on the examining attorney,
in the first instance, to present evidence sufficient to
establish a prima facie case that a term is primarily merely a
surname. In re Etablissements Darty et Fils, 759 F.2d 15, 225
USPQ 652 (Fed. Cir. 1985). Only when the examining attorney has
Serial No. 78221800
7
established a prima facie case does the burden shift to the
applicant to rebut the showing made by the examining attorney.
See In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238
(CCPA 1975).
As to the first factor, we point out that the degree of
rarity of a surname has a direct bearing on whether the term
will be perceived by the public as primarily merely a surname.
In re Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988); and In
re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987). A surname may
be so rare or obscure that it may not fall within the
proscription of Section 2(e)(4) of the Act. See In re Benthin
Management GmbH, 37 USPQ2d 1332 (TTAB 1995); and In re Sava
Research Corp., 32 USPQ2d 1380 (TTAB 1994).
The examining attorney has produced evidence of only one
individual in the entire United States with the surname
"Sikorsky." The individual is Igor Sikorsky, now deceased, who
was the founder of Sikorsky Aircraft Corporation in 1923. Apart
from any question of whether "Sikorsky Aircraft Corporation" is
well known, there is no evidence showing that the individual,
Igor Sikorsky, is well known or that his name has had wide
exposure to the purchasing public.6 Applicant's statement in its

6 We note that the examining attorney in her search for "Sikorsky" on
the Wikipedia website was redirected to the entry for "Sikorsky
Aircraft Corporation." There is apparently no separate entry in the
encyclopedia for the individual, Igor Sikorsky.
Serial No. 78221800
8
brief regarding the telephone listings for "Sikorsky" in
Yahoo.com is unsupported by any documentation or information
about the listings. It is impossible to draw any meaningful
conclusion from the statement alone about the extent of public
exposure to the term or that its surname meaning would be
recognized by a significant segment of the purchasing public.
See In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987) (noting
that "[v]irtually no exposure of 'Garan' as a surname has been
demonstrated"). See also, e.g., In re Etablissements Darty et
Fils, supra at 653 (observing that in In re Kahan & Weisz
Jewelry Manufacturing Corp., 508 F.2d 831, 184 USPQ 421 (CCPA
1975), "the PTO sought to buttress its position by resort to the
applicant's submissions," the Court stated, "[n]ot only was the
refusal to register without the examiner having made a prima
facie case improper, but also, as one might expect, the
applicant's evidence was insufficient to establish a case for
the PTO.")
As to the second factor, if "Sikorsky" is the name of
someone associated with applicant, it could well indicate the
public recognition of the term as a surname. Igor Sikorsky is
the name of the individual who founded the company in 1923.
However, that individual is deceased and we question whether
this reflects current use as a surname by anyone in the United
States or current perception of the term as a surname.
Serial No. 78221800
9
Turning to the third factor, whether the term has another
recognized meaning, we point out that the examining attorney is
required to show, as part of her prima facie case, not only that
"Sikorsky" is a surname but that it is primarily merely a
surname. The examining attorney has introduced no evidence,
such as the absence of the term from the dictionary, that the
term has no meaning other than a surname.7
As to the fourth factor, the examining attorney concludes
that "Sikorsky" has the structure and pronunciation of a surname
on the basis that Sikorsky has no other meaning, which as noted
above, the examining attorney has not proven. There is
otherwise no evidence or at least an explanation to support the
examining attorney's conclusory contention that "Sikorsky" has
the "look and sound" of a surname. Compare, e.g., In re
Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988)
("'Pirellli' looks like an Italian surname, being similar in
structure to Italian surnames which do appear in excerpts from
the American Surnames reference book (viz., Antonelli,
Mancinelli and Pacelli, etc.)") In addition, for the reasons
noted earlier, we cannot give much weight in this case to the
fact that Igor Sikorsky is the name of applicant's founder.

7 We are not persuaded by applicant's evidence and argument that the
term does have another recognized meaning. On the other hand, it is
not an applicant's burden to make this showing unless and until the
examining attorney first establishes a prima facie case that the term
is primarily merely a surname.

Serial No. 78221800
10
As a final matter, the examining attorney has provided no
authority for her apparent contention that applicant's Section
2(f) claim in its prior registration for SIKORSKY amounts to a
concession as to the present application, for different goods,
that the term is primarily merely a surname. Even in cases
where an applicant concedes the lack of inherent distinctiveness
in the application itself, TMEP §1212.02(b) instructs that the
examining attorney "should not rely on this concession alone,
but should rely on other appropriate evidence."
We find, under the factors set out in United Distillers and
based on the record before us, that the examining attorney has
not met her initial burden of showing that SIKORSKY would be
viewed as primarily merely a surname.
Decision: The refusal to register under Section 2(e)(4) of
the Trademark Act is reversed.