Suphachat-wong Innovation Co., Ltd.

Trademark Trial and Appeal Board

Dec 2, 2016

No. 86516441 (T.T.A.B. Dec. 2, 2016)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Mailed: December 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Suphachatwong Innovation Co., Ltd.
________

Serial No. 86516441
_______

Alexander Lazouski, Esq.
for Suphachatwong Innovation Co., Ltd.

Travis Wheatley, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
_______

Before Quinn, Cataldo, and Lykos,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Suphachatwong Innovation Co., Ltd. (“Applicant”) filed an application to register
on the Principal Register VEASY (in standard characters) as a mark for “plant and
flower seeds; live plants and flowers; live tropical plants, orchids and vandas, being
orchids” in International Class 31.1

1 Application Serial No. 86516441, filed January 28, 2015 under Section 44 of the Trademark
Act, 15 U.S.C. § 1126, based on Reg. No. 013432745 issued March 18, 2015 by the European
Community’s Office for Harmonization in the Internal Market (OHIM), now known as the
European Union Intellectual Property Office (EUIPO).
Serial No. 86516441

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The Trademark Examining Attorney refused registration under Section 2(e)(4) of
the Trademark Act, 15 U.S.C. § 1052(e)(4), on the ground that VEASY is primarily
merely a surname.
When the Examining Attorney made the refusal final, Applicant appealed.
Applicant and the Examining Attorney filed briefs.
We reverse the refusal.
Arguments
The Examining Attorney asserts that the evidence establishes a prima facie case
that VEASY is primarily merely a surname; although he acknowledges the “relative
rarity” of the surname based on the number of “hits” in public records (approximately
300-400), the Examining Attorney maintains that the additional evidence shows that
the consuming public has been exposed to VEASY as a surname and, thus, the public
will primarily perceive it as a surname. (6 TTABVUE 7). Further, the Examining
Attorney points to the absence of evidence showing that the term has any meaning
or significance other than as a surname, and that VEASY has the structure and
pronunciation of a surname, pointing to the existence of the more common surname
VEASEY which, according to the Examining Attorney, is the surname of “famous
individuals.” (6 TTABVUE 8). The Examining Attorney goes on to contend that
Applicant’s evidence and arguments do not rebut the prima facie showing that
VEASY is primarily merely a surname. In support of the refusal, the Examining
Attorney submitted electronic telephone directory listings; excerpts of articles
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retrieved from the LexisNexis database; excerpts retrieved from the website of the
U.S. Census Bureau; dictionary evidence; and portions of third-party websites.
Applicant argues that the Examining Attorney failed to make a prima facie case
that VEASY is primarily merely a surname. In this connection, Applicant contends
that VEASY is an extremely rare surname and, thus, the majority of consumers will
never encounter a person with that surname. Therefore, Applicant asserts,
consumers will not perceive the mark as a surname. Applicant also states that news
articles making reference to individuals with the surname VEASY fail to show that
these persons are known by consumers; that VEASY does not have the “look or feel”
of a surname, discounting the evidence regarding the surname VEASEY; and that no
one connected with Applicant has the surname VEASY. Applicant also claims that
VEASY is a combination of the words “very” and “easy,” or “vase” and “easy,”
suggesting that Applicant’s plants and flowers can be easily grown, arranged or kept
alive in a vase; that is, a new breed of plants that are very easy to maintain.

The Law
Section 2(e)(4) of the Trademark Act precludes registration of a mark on the
Principal Register which is “primarily merely a surname” without a showing of
acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f). 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, 1221 (TTAB 2000).
Serial No. 86516441

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See also In re Hutchinson Tech. Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir.
1988). This expression of the test restates the rule set forth in In re Kahan & Weisz
Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421, 422 (CCPA 1975) (“[A] correct
resolution of the issue can be made only after the primary significance of the mark to
the purchasing public is determined …”) and In re Etablissements Darty et Fils, 759
F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985) (“Darty”). In Darty, the Federal Circuit
considered several factors in determining whether the purchasing public would
perceive a proposed mark as primarily merely a surname, including: whether the
applicant adopted a principal’s name and used it in a way that revealed its surname
significance; whether the term had a nonsurname “ordinary language” meaning; and
the extent to which the term was used by others as a surname. 225 USPQ at 653. The
Board’s oft-cited “Benthin factors,” see In re Benthin Mgmt. GmbH, 37 USPQ2d 1332,
1333-34 (TTAB 1995), are also examples of inquiries that may lead to evidence
regarding the purchasing public’s perception of a term’s primary significance.2 These
inquiries or “factors” are not exclusive and any of these circumstances – singly or in

2 In Benthin, the Board stated that “factors” to be considered in determining whether a
term is primarily merely a surname include (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; (4) whether the term has the
“structure and pronunciation” of a surname; and (5) whether the stylization of lettering
is distinctive enough to create a separate commercial impression. Where, as here, the
mark is in standard characters, it is unnecessary to consider the fifth factor. In re Yeley, 85
USPQ2d 1150, 1151 (TTAB 2007).

Serial No. 86516441

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combination – and any other relevant circumstances may shape the analysis in a
particular case.3 In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016).
When we are faced with a Section 2(e)(4) refusal of a term in standard character
form, with no other literal or design elements, we consider the impact the applied-for
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, 149 (Comm’r Pat. 1955)) (emphasis in original).
Whether the primary significance of an applied-for mark is merely that of a
surname is a question of fact. See Darty, 225 USPQ at 653-54. There is no rule as to
the kind or amount of evidence necessary to show that the applied-for mark would be
perceived as primarily merely a surname. This question must be resolved on a case-
by-case basis. Id. at 654; see also, e.g., In re Pohang Iron & Steel Co., 230 USPQ 79,
79 (TTAB 1986). The entire record is examined to determine the primary significance
of a term.
Among the circumstances that may be probative in determining if a mark is
primarily merely a surname are:

3 See Benthin, 37 USPQ2d at 1333 (stating that notwithstanding the rareness of BENTHIN
as a surname, panel “would find” that it “would be perceived as primarily merely a surname”
because of lack of other meanings and because it is the name of applicant’s Managing
Director, but the highly stylized form shifted the balancing of factors to a finding that
BENTHIN is not primarily merely a surname).

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whether the term is the surname of anyone connected with the
applicant;
whether the term has any recognized meaning other than as a surname;
whether evidence shows that the term has the structure and
pronunciation of a surname;
whether there is contextual use related to surname significance; and
whether the evidence shows use of the term as a surname is rare.
Exinius Coffee, 120 USPQ2d at 1278. Because the Examining Attorney and Applicant
focused their arguments on these issues, we review each in turn, but in making our
determination we weigh them together and accord the appropriate weight to each one
based on the evidence of record.4

Whether VEASY is the Surname of Anyone Connected with Applicant
There is no evidence to indicate that anyone connected with Applicant has the
surname VEASY; indeed, Applicant states that “no one connected with or related to
Applicant has the involved term as a surname.” (4 TTABVUE 13). Cf. In re Integrated
Embedded, 120 USPQ2d 1504, 1506-07 (TTAB 2016) (applicant’s website showing,
discussing the credentials of, and enabling visitors to contact, applicant’s “Namesake”
and Chief Technical Officer Thomas Barr serve to reinforce the primary significance
of BARR as a surname in the proposed mark BARR GROUP); Eximius Coffee, 120
USPQ2d at 1278-80 (where the surname of those associated with the applicant was

4 No other factors are discussed, nor is there evidence that implicates the probative
significance of any other possible factor, inquiry or circumstance.

Serial No. 86516441

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ALDECOA and the product was promoted as “premium family coffee,” this reinforced
the surname significance of ALDECOA).

Whether VEASY Has Any Recognized Meaning Other Than As a Surname
Of record are dictionary pages showing that there is no listing for VEASY.
(onelook.com; macmillandictionary.com). There is no evidence showing VEASY has
any recognized meaning other than as a surname. We are not persuaded by
Applicant’s argument, especially in the absence of corroborating documentary
evidence (e.g., advertisements), that the term is the product of a combination of the
words “very” and “easy,” or “vase” and “easy,” suggesting that Applicant’s plants and
flowers can be easily grown, arranged or kept alive in a vase, or that the goods
comprise a new breed of plants very easy to maintain.

Whether VEASY Has the Structure and Pronunciation of a Surname
Assessing whether VEASY has the structure and pronunciation of a surname, is
a “decidedly subjective” inquiry. Benthin, 37 USPQ2d at 1333; see also Binion, 93
USPQ2d 1531, 1537 (TTAB 2009). Under this factor, examining attorneys and
applicants may submit evidence that, due to a term’s structure and pronunciation,
the public would or would not perceive it to have surname significance.
The Examining Attorney argues that the surname VEASY is similar in structure
and pronunciation to the more common surname VEASEY which, according to the
Examining Attorney, is the surname of certain “famous individuals.” In this
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connection, the Examining Attorney submitted the results of a search of the
LexisNexis database showing that the surname VEASEY is a more common surname
than VEASY, appearing 2049 times. According to the Examining Attorney, the
evidence also shows “famous individuals” with the surname VEASEY, including a
U.S. Congressman,5 a former Chief Justice of the Delaware Supreme Court, and an
executive producer for CSI:NY, a television show. The Examining Attorney also
highlights that Representative Veasey is a named plaintiff in a “nationally known”
U.S. Supreme Court case involving voting rights.6 The Examining Attorney further
pointed out two instances when publications mistakenly used VEASY rather than the
correct VEASEY in identifying two individuals.7
Because of the highly subjective nature of this inquiry, we find that the evidence
of record is insufficient to establish the Examining Attorney’s point. We recognize
that VEASY and VEASEY obviously differ by only one letter; thus, they are similar
in structure. Further, given the similar structure, they are likely to sound similar

5 The record lacks details regarding the Examining Attorney’s implication that there would
be significant public exposure to this name. The mere fact that Marc Veasey (R-Texas) is a
member of Congress is not, in and of itself, sufficient to establish the examining attorney’s
point. This lack of evidence stands in contrast to the record in In re Gregory, 70 USPQ2d
1792, 1795 (TTAB 2004), showing that James Rogan, in addition to being a former Director
of the USPTO, was the majority leader of the California State Assembly before being elected
to represent a U.S. House district in Southern California; that he received press attention for
his role as an impeachment manager during the impeachment trial of former President
Clinton; and that he subsequently received additional press attention for his role as a
candidate for re-election in what was reported to be, at that time, the most expensive race
ever for a seat in the U.S. House of Representatives.
6 Veasey v. Abbott. Although this case undoubtedly has received attention in a general election
year, there is no evidence to show that it is a “nationally known” case (as would be the
situation with Roe v. Wade or Bush v. Gore.).
7 There again is a lack of evidence to show that the named individuals are prominent and/or
would be familiar to consumers.
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when spoken, recognizing, of course, that there is no correct pronunciation of a mark.
See, e.g., In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
However, at bottom, there is no direct objective evidence bearing on how members of
the public perceive VEASEY. See Eximius Coffee, 120 USPQ2d at 1280 (reference to
purported surnames “without proving that they are surnames, without showing how
common such surnames with the suffix “OA” are, and without providing some other
objective evidence of how members of the public perceive the structure and sound of
ALDECOA is not sufficient to enable us to determine that ALDECOA has a structure
and pronunciation similar to that of other purportedly common surnames”). In sum,
we find that the evidence falls short of establishing how consumers actually
understand VEASEY. With respect to this difficult type of argument, we would
require more objective evidence, from Applicant or the Examining Attorney, of how
members of the public likely would perceive VEASY. Indeed, evidence showing that
VEASEY is primarily merely a surname, and a common one at that, would have been
probative in showing that the similarly structured and pronounced surname VEASY
is also primarily merely a surname.

Whether Contextual Use Reveals Surname Significance
Inasmuch as there is no evidence showing the mark in actual use, the record does
not reveal any contextual clues that might identify the term as a surname to
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consumers.8 When an unfamiliar term is first encountered, the consumer often learns
its meaning through context. At the present time there is nothing to show any
contextual use that would make VEASY more likely to be perceived as a surname
than as a coined or unknown term.
In view thereof, the present case is clearly distinguishable from Darty, 225 USPQ
at 653, wherein the Court observed that DARTY was “used in the company name in
a manner which reveals its surname significance (Darty et Fils translates as Darty
and Son),” highlighting that “[t]his, in itself, is highly persuasive that the public
would perceive DARTY as a surname.” Id. (emphasis added).
The present case likewise is distinguishable from the recent decision in Eximius
Coffee wherein the Board determined that although ALDECOA is a rare surname
(233 individuals as shown by U.S. Census records) with “minimal additional public
exposure in the media,” nevertheless it is primarily merely a surname. In that case,
the Board relied upon what the Examining Attorney characterized as “a strong
connection with the owners of the application,” further noting the Examining
Attorney’s observation that “[i]n both Darty and Rebo [In re Rebo High Definition
Studio Inc., 15 USPQ2d 1314 (TTAB 1990)] the court determined the mark was a
surname on very similar facts as to this case. i.e., the mark was rare but there was
evidence of a connection to the applicant and there was no other meaning.” In
Eximius Coffee, the Board, citing Darty, “accord[ed] particular weight to Applicant’s

8 In the event Applicant subsequently commences use and files a Statement of Use, the
Examining Attorney, when examining the evidence of actual use, may at that time revisit
the contextual use issue and its possible bearing on registrability under Section 2(e)(4).
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association of the goods with the family name ALDECOA, both on the website
showing the founder’s and current owner’s surname is ALDECOA and the packaging
that refers to ‘A Family Coffee’ directly under the surname ALDECOA.” Eximius
Coffee, 120 USPQ2d at 1283. As noted earlier, no such contextual use has been shown
here and, inasmuch as no one with the surname is connected to Applicant, it would
be unlikely for this type of use to occur. The same can be said when distinguishing
the present case from Integrated Embedded, where applicant’s website showed,
discussed the credentials of, and enabled visitors to contact applicant’s “Namesake”
and Chief Technical Officer Thomas Barr; these uses served to reinforce the primary
significance of BARR as a surname in the proposed mark BARR GROUP. Integrated
Embedded, 120 USPQ2d at 1506-07.
Contextual use could come up in other ways, not just in the context of whether
the connection of someone with the surname is stressed by the applicant. For
example, if there is an obscure non-surname meaning, and that meaning would be
suggestive (not descriptive) of the goods, the applicant might choose to stress the
suggestive significance of the obscure meaning, which might become more important
than the surname meaning, in terms of primary consumer perception. Thus,
contextual use can harm an applicant, as in ALDECOA and BARR GROUP, but in
theory, it could help; and it may be part of the analysis apart from this one factor.

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Whether VEASY Is Rarely Encountered As A Surname
The Examining Attorney conducted a nationwide telephone directory search
using the LexisNexis Public Records database, which showed 417 listings of VEASY.
Of these, the Examining Attorney submitted 100 examples.9 The Examining Attorney
also submitted excerpts from the U.S. Census Bureau website showing the frequency
of all surnames occurring 100 or more times in the Census 2000 returns. VEASY
appeared 333 times, giving it a ranking on the list of 57252 (out of 151672 surnames
that appeared at least 100 times; according to the Examining Attorney “VEASY was
in approximately the top 38% in frequency of appearance in the Census 2000 results
for all surnames appearing at least 100 times”).
By any standard, VEASY is a very rare surname. Even a rare surname, however,
may be held primarily merely a surname if its primary significance to purchasers is
that of a surname. Some surnames have only surname significance, and consumers
recognize them as surnames despite their rarity. One significant reason may be
contextual clues that identify the term as a surname to consumers. (see discussion,
supra). Another reason for consumer recognition of a rare surname is that media

9 Applicant essentially objects to consideration of the number of individuals totaling 417,
asserting that because information identifying only 100 of them was submitted, “it should be
assumed that no more than 100 individuals carry a surname VEASY.” To the contrary, we
agree with the Examining Attorney’s assessment that this representative sample is sufficient
in the circumstances. In saying this, however, we appreciate Applicant’s point that even in
the representative sample of 100, there are no fewer than 5 instances showing duplicative
references. We therefore have relied upon what we view to be the more reliable Census 2000
number of 333 individuals with the surname VEASY. See TMEP § 1211.02(b)(iii) (October
2016) (“Because the [Census Bureau] database reflects the number of individuals, rather
than the number of households, with a particular name, search results from this database
may be more persuasive evidence of surname frequency than results from telephone directory
listings.”).
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publicity for the surname makes the surname significance well-known so that
consumers regard the surname significance as primary. See In re Gregory, 70
USPQ2d at 1795.
Thus we turn to consider the search results of the LexisNexis Public Records
database showing 96 articles that reference individuals with the surname VEASY;
the Examining Attorney also submitted excerpts retrieved from 10 city newspapers
showing articles containing references to individuals named VEASY, and screenshots
of websites making reference to people having the surname VEASY, as well as certain
genealogy websites. The Examining Attorney states that “based on their occupations
as artist, teacher, executive director of a non-profit active in the community,
regionally recognized pediatric cardiac surgeon, they will interact regularly with a
wide variety of people who are likely to recognized [sic] VEASY as a surname.” (Office
action, 10/6/15). He does concede, however, that the evidence fails to show “a
nationally famous figure.” (6 TTABVUE 12).
The relevant question is not simply how frequently a surname appears, however,
but how frequently it has been exposed to the purchasing public as a surname,
thereby causing consumers to recognize it as such. Our focus, then, is on whether the
purchasing public for an applicant’s goods or services is more likely to perceive the
applicant’s proposed mark as only a surname rather than as something else. See In
re United Distillers plc, 56 USPQ2d at 1221. In In re Gregory, supra, for example, the
record revealed appreciable media exposure afforded to individuals bearing the
surname “Rogan,” including former Congressman and USPTO director James Rogan,
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Baseball Hall of Famer Wilber Rogan, author Barbara Rogan, and actors Seth Rogan
and Joe Rogan. Based on such evidence of wide public exposure, the Board concluded
that “the name [Rogan] may be rare when viewed in terms of frequency of use as a
surname in the general population, but not at all rare when viewed as a name
repeated in the media and in terms of public perception.” Id. at 1795. That evidence
of exposure is contrasted with the relatively limited exposure in the present case,
which shows that VEASY is the surname of various individuals (including a nurse,
real estate agent, doctor and sales consultant), but one that is seldom encountered by
the consuming public.
The type of evidence submitted by the Examining Attorney can be probative and
aid analysis because it shows public exposure to VEASY as a surname. However, to
reiterate, he concedes the evidence fails to show “a nationally famous figure” with the
surname. Further, Applicant accurately points out a number of infirmities of this
evidence (duplicates; obituaries; short profiles or surname mentioned only in passing;
surname buried in text, etc.), concluding that the evidence falls short of showing that
VEASY “commonly appears in newspapers and other media, or of supporting a
finding that individuals having the surname have enjoyed broad exposure to the
general public such that ‘Veasy’ is well recognized as a surname.” (7 TTABVUE 5-6).
We agree with Applicant, and find that the Examining Attorney’s evidence does
not “reflect the broad exposure that would place a rarely encountered surname more
frequently in the public eye.” In re Eximius Coffee, 120 USPQ2d at 1281 (and cases
cited thereat).
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Based on the record, consumers would not think of the rare surname VEASY
primarily merely as a surname because they are highly unlikely to have encountered
it as such, but rather are just as likely to regard the term as being a coined term or
unknown term with an unknown meaning. In such cases, we “pass the mark to
publication with the knowledge that others who have the same surname and use it
or wish to use it for the same or similar goods or services can file a notice of
opposition.” Benthin, 37 USPQ2d at 1334.
As just noted, because the Office bears the burden of proof, the presumption is in
favor of publishing proposed marks for opposition, so competitors may assert their
rights to use the term. Id. In this case, given the rareness of VEASY as a surname,
and the paucity of evidence demonstrating its public use as a surname, we simply
cannot assume that the purchasing public will view the mark as a surname based on
exposure to the surname use.

Conclusion
We find the following: that the mark does not identify anyone associated with
Applicant; that there are no contextual clues indicating the surname significance of
VEASY; that the mark has no defined ordinary language meaning; that the evidence
of record is insufficient to show a structure and pronunciation similar to another
single surname that would render it more likely to be regarded as a surname than as
a fanciful mark; and that use of VEASY as a surname by others, rare to begin with,
has not been sufficiently exposed to the purchasing public that it is likely to be
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recognized as primarily merely a surname. In sum, we cannot say that the primary
significance of VEASY to the purchasing public is that of a surname.
On balance, having weighed all of the evidence of record, we find that that
Applicant’s mark is not primarily merely a surname under Section 2(e)(4).
Decision: The refusal to register is reversed.