Stride & Associates, Inc.

Trademark Trial and Appeal Board

Feb 24, 2009

No. 77043573 (T.T.A.B. Feb. 24, 2009)

Mailed: February 24, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Stride & Associates, Inc.
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Serial No. 77043573
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Sean Ploen of Ploen Law Offices for Stride & Associates,
Inc.

Mayar C. Vaghani, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
____________

Before Quinn, Walters and Bergsman, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Stride & Associates, Inc. has filed an application to
register on the Principal Register the standard character
mark NAPIER PARTNERS for “employment placement services;
recruitment of professionals in the fields of finance,
accounting and bookkeeping; employment recruiting and
counseling services,” in International Class 35.1

1 Serial No. 77043573, filed November 14, 2006, based on an allegation
of a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77043573
2
The examining attorney has issued a final refusal to
register, under Section 2(e)(4) of the Trademark Act, 15
U.S.C. §1052(e)(4), on the ground that applicant’s mark is
primarily merely a surname; and, under Section 6 of the
Trademark Act, 15 U.S.C. §1056, on the ground that PARTNERS
is merely descriptive in connection with applicant’s
services and must be disclaimed apart from the mark as a
whole.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs.
Disclaimer Requirement
The test for determining whether a mark or a portion of
a mark is merely descriptive is whether it immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product or
service in connection with which it is used, or intended to
be used. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not necessary,
in order to find that a mark or a portion thereof is merely
descriptive, that it describe each feature of the goods or
services, only that it describe a single, significant
quality, feature, etc. In re Venture Lending Associates,
226 USPQ 285 (TTAB 1985). Further, it is well-established
Serial No. 77043573
3
that the determination of mere descriptiveness must be made
not in the abstract or on the basis of guesswork, but in
relation to the goods or services for which registration is
sought, the context in which the mark or portion thereof is
used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
The examining attorney contends that PARTNERS is merely
descriptive of the source of the services; that applicant’s
legal identity as a corporation is immaterial; that
purchasers will perceive PARTNERS as indicating a specific
type of entity, not as an arbitrary or suggestive term. In
support of this position, the examining attorney submitted
twenty-three third-party registrations owned by corporate
registrants, yet the mark includes the term PARTNERS with a
disclaimer thereof, or the mark is registered on the
Supplemental Register; and the definition of “partner” from
dictionary.cambridge.com as “1. a person you are closely
involved with in some way, 2. one of the owners of a
company….”
Applicant contends that it is a corporation rather than
a partnership; and that it is using PARTNERS in its mark in
an arbitrary manner. Applicant states that PARTNERS does
not describe the nature of applicant’s employment,
recruitment and counseling services and the fact that it may
Serial No. 77043573
4
be an entity designation is irrelevant. Applicant requests
that, should the Board affirm the requirement for a
disclaimer, the application be remanded to the Examining
Attorney for entry of the disclaimer.
The record establishes that PARTNERS is an entity
designation. The fact that applicant is a corporation does
not render the term arbitrary. Prospective purchasers
viewing the mark in connection with the identified services
will perceive the term PARTNERS as an entity designation.
Applicant does not point to any double entendre or other
possible meaning of the term PARTNERS in the context of the
mark as a whole or in view of the services. It is nothing
more than an entity designation. As stated by the examining
attorney, it is irrelevant that applicant’s legal entity is
actually that of a corporation. There is nothing in the
mark or nature of the goods that reveals that applicant is a
corporation, thus, there is nothing unique about the use of
the term PARTNERS in the mark in this context.
This entity designation, PARTNERS, does not serve to
identify the source of applicant’s services but rather
merely indicates a type of entity which presumably performs
the services and, thus, it has no trademark significance.
See, e.g., In re Patent & Trademark Services, Inc., 49
USPQ2d 1537 (TTAB 1998) (INC. in the mark PATENT & TRADEMARK
SERVICES, INC. serves no trademark function) and cases cited
Serial No. 77043573
5
therein. See also TMEP §1203.03(b) (5th ed. 2007) ("Words
or abbreviations in a trade name designating the legal
character of an entity (e.g., Corporation, Corp., Co., Inc.,
Ltd., etc.) must be disclaimed because an entity designation
has no source-indicating capacity. The only exception to
this practice is where the entity designation is used in an
arbitrary manner (e.g., 'THE LTD.' or 'KIDS INC.' for
clothing").
Therefore, the examining attorney properly required a
disclaimer of PARTNERS apart from the mark as a whole.
Surname Refusal
Section 2(e)(4) of the Trademark Act prohibits the
registration on the Principal Register of a mark that “is
primarily merely a surname.” In surname cases, we must
determine the impact the term has or would have on the
purchasing public because “it is that impact or impression
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 (Comm’r 1955)
(emphasis in original).
“Among the factors to be considered in determining
whether a term is primarily merely a surname are the
Serial No. 77043573
6
following: (i) whether the surname is rare; (ii) whether
anyone connected with applicant has the involved term as a
surname; (iii) whether the term has any other recognized
meaning; and (iv) whether the term has the “look and feel”
of a surname.” In re United Distillers plc, 56 USPQ2d 1220,
1221 (TTAB 2000). See also In re Gregory, 70 USPQ2d 1792
(TTAB 2004); and In re Benthin Management GmbH, 37 USPQ2d
1332 (TTAB 1995). The examining attorney has the burden of
establishing 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, 653 (Fed. Cir. 1985). Moreover,
“[t]he question of whether a word sought to be registered is
primarily merely a surname within the meaning of the statute
can only be resolved on a case by case basis,” taking into
account a number of various factual considerations. Id.
The examining attorney contends that the only
connotation of NAPIER is as a surname and that PARTNERS is a
generic term which does not detract from the surname
significance of the mark as a whole. Noting that applicant
is not a partnership, the examining attorney contends that,
nonetheless, purchasers will understand the term only as
designating applicant’s entity. In support of this
position, the examining attorney submitted excerpts from
Serial No. 77043573
7
online directories showing listings for the name NAPIER;2
three third-party registrations of NAPIER registered on the
Principal Register under Section 2(f); the results of a name
search for NAPIER in the LEXIS/NEXIS database, which
returned more than 3000 results; and an excerpt from
Merriam-Webster Online Dictionary defining NAPIER as an
English surname and/or the surname of a famous Scottish
mathematician.
Applicant does not disagree that NAPIER is primarily
merely a surname (Brief, p. 3), but contends that the
addition of PARTNERS to the surname renders the mark as a
whole not primarily merely a surname. Applicant argues that
PARTNERS is at most suggestive of its employment,
recruitment and counseling services; and that it is
irrelevant whether or not PARTNERS is an entity designation.
We agree that the examining attorney has established
that NAPIER is a surname in the United States. We also find
that NAPIER is not a rare surname; that NAPIER has no other
meaning, and its notoriety as a surname is underscored by it
having been the surname of a well known Scottish
mathematician; and that it clearly has the look and feel of
a surname. Thus, NAPIER is primarily merely a surname.
However, the question remains as to whether the addition of

2 Searches on 411.com and Whitepages.com each returned “over 300
results”; and a search on Yahoo! People Search returned 7031 results.

Serial No. 77043573
8
PARTNERS to create the mark NAPIER PARTNERS is sufficient to
render the mark as a whole not primarily merely a surname.
As noted in connection with our finding that a
disclaimer of PARTNERS is necessary, PARTNERS is merely an
entity designation with no trademark significance. As such,
it adds little to the overall commercial impression of the
mark NAPIER PARTNERS, which we conclude remains primarily
merely a surname.
Decision: The refusal under Section 2(e)(4) of the Act
is affirmed. The requirement for a disclaimer of PARTNERS
is affirmed.
Applicant offered to submit a disclaimer of this term
if the Board affirms the disclaimer requirement. Should
applicant prevail on the issue of the surname refusal but
not the disclaimer requirement in any appeal taken in this
application, applicant has until thirty days from the date
of the final decision to submit to the Board a proper
disclaimer of the term PARTNERS apart from the mark NAPIER
PARTNERS as a whole.