Timothy C. Bonerb

Trademark Trial and Appeal Board

Apr 15, 1999

No. 75151207 (T.T.A.B. Apr. 15, 1999)

Paper No. 12
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 15, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Timothy C. Bonerb
________
Serial No. 75/151,207
_______
Phillip E. Decker for Timothy C. Bonerb.
Barbara A. Gaynor, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Quinn, Hairston and Wendel, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An intent-to-use application has been filed by Timothy
C. Bonerb to register the mark TUCKERMAN for “non-metallic
inflatable bladders used for removing ice and snow from
roofs and attached structures.”1
Registration has been finally refused under Section
2(e)(4) of the Trademark Act, 15 U.S.C. §1052(4), on the
Ser No. 75/151,207
2
ground that the mark is primarily merely a surname.
Applicant has appealed. Briefs have been filed, but no
oral hearing was requested.
In support of the refusal to register, the Examining
Attorney made of record a printout retrieved from the
PHONEDISC U.S.A. database (1996 ed.) which shows listings
for 203 individuals having the surname “Tuckerman.” In
addition, the Examining Attorney made of record excerpts of
thirty stories retrieved from the NEXIS database which make
mention of individuals with the surname “Tuckerman.”2 Also,
the Examining Attorney submitted a page from Webster’s II
New Riverside University Dictionary (1994 ed.) which shows
no entry for “Tuckerman” and an excerpt from American
Surnames (1969) which lists “Tuckerman” as a surname and
indicates that the surname originates from an occupation.
Applicant, on the other hand, contends that the
primary significance of Tuckerman is not as a surname, but
rather as a geographic location. In particular, applicant
states that “Tuckerman” refers to Tuckerman Ravine in New
Hampshire, a place known for its skiing and hiking, and
that the mark TUCKERMAN, as used in connection with

1 Application Serial No. 75/151,207 filed August 16, 1996 under
Section 1(b) of the Trademark Act, based on applicant’s
allegation of a bona fide intent to use the mark in commerce.
Ser No. 75/151,207
3

2 It appears that the Examining Attorney’s search revealed over
two hundred stories of which she submitted a representative
sample.
Ser No. 75/151,207
4
applicant’s services, is suggestive of the ice and snow
applicant removes from roofs. In support of its position,
applicant submitted an excerpt from the AMC White Mountain
Guide which indicates that Tuckerman Ravine is a ski area
in the Mt. Washington area of New Hampshire. Also,
applicant submitted the results of an Internet search of
web sites which include the word “Tuckerman.” The ten “top
hits” included eight web sites which concerned the
Tuckerman Ravine ski area. Applicant maintains that the
search results from the Internet are more representative of
the significance of “Tuckerman” than the NEXIS search
because the Internet reaches more people.3
Whether a mark is primarily merely a surname depends
upon whether its primary significance to the purchasing
public is that of a surname. In re Hutchinson Technology,
Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988). The
Office has the burden of establishing prima facie that a

3 We note that the Examining Attorney has raised an issue as to
whether information obtained from the Internet is admissible. In
particular, she contrasts the content of a web site, which can be
changed on a daily basis, with articles appearing in the NEXIS
database, which have been published in hard form in newspapers,
journals, and the like. The Board has taken the position that
information obtained from the Internet is admissible, but must be
evaluated for its probative weight. See Raccioppi v. Apogee
Inc., 47 USPQ2d 1368, 1371 (TTAB 1998). Also, inasmuch as the
evidence herein was timely made of record and is accompanied by
information as to what search engines were used and the category
of the search, we see no reason to exclude the evidence from
consideration.
Ser No. 75/151,207
5
term is primarily merely a surname. In re Etablissements
Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985).
Provided that the Examining Attorney establishes a prima
facie case, the burden shifts 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, 239-40 (CCPA
1975).
In this case, the PHONEDISC U.S.A. and NEXIS evidence,
along with the excerpt from American Surnames are
sufficient to establish a prima facie case that TUCKERMAN
is primarily merely a surname. As noted by the Examining
Attorney, the information in the NEXIS database is taken
from widely disseminated printed publications such as
newspapers, magazines and journals, and, thus is probative
of the significance of “Tuckerman.”
With respect to applicant’s evidence that TUCKERMAN
has significance as the name of an area in New Hampshire,
we find this use to be somewhat obscure. Applicant itself
acknowledged as much in its May 14, 1997 response to the
Examining Attorney’s Office action:
Unlike FAIRBANKS, TUCKERMAN is not a well-
known term to the American public. To most
Americans, the reference is likely to be
so remote or obscure as to be inherently
distinctive when applied to the Applicant’s
goods, such that the purchasing public
Ser No. 75/151,207
6
would not associate the place as being
the geographic origin of the goods.
In any event, we do not believe that the other meaning of
TUCKERMAN is sufficient to take it out of the “primarily
merely a surname” category.
Finally, we should add that we agree with the
Examining Attorney that TUCKERMAN looks and sounds like a
surname.
Decision: The refusal to register is affirmed.
T. J. Quinn
P. T. Hairston
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
Ser No. 75/151,207
7
Ser No. 75/151,207
8