Vegard Ulvang

Trademark Trial and Appeal Board

Dec 15, 2004

No. 78160641 (T.T.A.B. Dec. 15, 2004)

Mailed: December 15, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Vegard Ulvang
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Serial No. 78160641
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Laurel V. Dineff of Dineff Trademark Law Limited for Vegard
Ulvang.
Jennifer M.B. Krisp, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______
Before Quinn, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On September 4, 2002, Vegard Ulvang (an individual
citizen and resident of Norway) filed an application to
register the mark ULVANG on the Principal Register for
“socks” in International Class 25. The application is
based on applicant’s Norwegian Registration No. 174432
pursuant to Section 44(e) of the Trademark Act, 15 U.S.C.
§1126(e).
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78160641
2
Registration has been finally refused under Section
2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4), on the
basis that the term ULVANG is primarily merely a surname.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. No oral hearing was
requested by applicant.
Applicant acknowledges that “ULVANG is the surname of
applicant” (brief, p. 5); that “ULVANG has no dictionary
meaning” (brief, p. 6.); and that ULVANG has “no
geographical significance or meaning in a foreign
language.” (Applicant’s response filed August 11, 2003, p.
1.)
Applicant contends that ULVANG is a particularly rare
surname in the United States as the Examining Attorney
produced only 15 listings out of millions to be found on
the PowerFinder (formerly PhoneDisc) database; that
applicant’s proposed mark will not evoke surname
significance to purchasers due to its rarity; that even
though the term is applicant’s surname, “due to the
connection between Applicant’s mark ULVANG and the specific
goods at issue, namely, ‘socks,’ the term ULVANG does not
create the impression of being a surname” (brief, p. 6);1
1 Applicant has not sought registration pursuant to Section 2(f)
of the Trademark Act, 15 U.S.C. §1052(f).
Ser. No. 78160641
3
that, while subjective in nature, the term “does not have
the clear look and sound of a surname” (brief, p. 7); and
that consumers will not regard the term ULVANG as primarily
merely a surname.
The Examining Attorney contends that the primary
significance of the term ULVANG to the purchasing public is
that of a surname as evidenced by (i) the 15 residential
listings of persons with that surname found in the
PowerFinder database, and (ii) several excerpted stories
retrieved from the Nexis database, all but two indicating
uses of a first name with the surname ULVANG.2 She further
contends that even rare surnames may be unregistrable under
the Trademark Act if, as here, the primary significance to
purchasers is that of a surname; and that the involved mark
“looks and sounds” like a surname.
It is well established that the USPTO has the burden
of establishing a prima facie case that a mark is primarily
merely a surname, and that the test for determining whether
a mark is primarily merely a surname is the primary
significance of the mark as a whole to the purchasing
2 The Examining Attorney also submitted the first few pages of
the search results from a Google search of “ulvang.” This
material is not probative as the listings are too truncated for
understandable context, and/or they are in a foreign language.
This evidence was not considered in reaching our decision.
Ser. No. 78160641
4
public. See In re BDH Two Inc., 26 USPQ2d 1556 (TTAB
1993), and cases cited therein. The Board looks to several
factors to be considered in our analysis of whether a term
is primarily merely a surname under Section 2(e)(4) of the
Trademark Act. See In re Gregory, 70 USPQ2d 1792 (TTAB
2004); and In re Benthin Management GmbH, 37 USPQ2d 1332
(TTAB 1995).
We are of the opinion that the Examining Attorney has
met the burden of proof here, and that applicant’s
arguments have failed to rebut the Office’s prima facie
case.
Although the 15 PowerFinder residential listings of
ULVANG are a small fractional percentage of the entire
PowerFinder database, virtually any surname (even extremely
common surnames) would presumably also constitute only a
small fractional percentage of this entire database. All
but two of the excerpted stories retrieved from the Nexis
database submitted by the Examining Attorney refer to
individual people whose surname is “Ulvang.” Also, the
PowerFinder evidence includes references to individuals
named ULVANG from many geographic areas of the United
States (California, Colorado, Kansas, Michigan, Oregon and
Washington). The Nexis evidence indicates coverage of
stories involving persons whose surname is ULVANG (John
Ser. No. 78160641
5
Ulvang, Emily Ulvang) in many geographical areas of the
United States (“Kansas City Star,” “Los Angeles Times,”
“Rocky Mountain News (Denver, CO),” “Salt Lake Tribune,”
“San Antonio Express-News,” “San Diego Union-Tribune” and
“Times-Picayune (New Orleans, LA)). It is noteworthy that
several of the excerpted stories include information about
Vegard Ulvang, an Olympic gold medal winner in cross-
country skiing. Even if ULVANG is a rare surname, this
does not mean that its surname significance would not be
recognized by a substantial number of members of the
general public.
As noted above, applicant concedes that ULVANG is
applicant’s surname and that the term has no dictionary,
geographical or foreign language meaning.
Finally, we consider the decidedly subjective factor
of whether ULVANG has the “look and sound” of a surname.
We conclude that it does. See In re Industrie Pirelli
Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988), aff’d
unpub’d, 883 F.2d 1026 (Fed. Cir. 1989).
Based on the evidence, we find that the primary
significance of this term to the purchasing public is that
of a surname.
Decision: The refusal to register under Section
2(e)(4) of the Trademark Act is affirmed.