Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE BDH TWO, INC.
Serial No. 74/127,752
March 31, 1993
Issued: February 10, 1993
Hearing: January 26, 1993
David R. Haarz, Esq. for applicant.
Richard A. Friedman
Trademark Examining Attorney
Law Office 14
(R. Ellsworth Williams, Managing Attorney)
Before Rice, Quinn and Hohein
An application has been filed by BDH Two, Inc. to register the mark GRAINGERS for "crackers and snack chips, namely corn chips, tortilla chips, wheat chips and chips made from one or more processed cereal grains." [FN1]
The Trademark Examining Attorney has refused registration under Section 2(e)(3) of the Act, 15 U.S.C. 1052(e)(3), on the ground that the matter sought to be registered is primarily merely a surname. Applicant has appealed. Applicant and the Examining Attorney have filed briefs. [FN2] Pursuant to applicant's request, an oral hearing was held before the Board. We reverse the refusal to register.
In support of the refusal, the Examining Attorney has submitted eleven excerpts from the NEXIS data base showing that ten individuals have the surname "Grainger." The Examining Attorney also has submitted listings from the telephone directories of four cities (Pittsburgh, Philadelphia, San Francisco and San Diego) which show, by our count, twenty-one individuals having the surname "Grainger." [FN3] Lastly, the Examining Attorney has submitted a page from a dictionary to show that there is no listing for "grainger." The Examining Attorney, citing pertinent case law, contends that the addition of the letter "s" in applicant's mark does not detract from the primary surname significance, concluding that he has made a prima facie case that the mark sought to be registered is primarily merely a surname.
Applicant has responded by criticizing the evidence introduced by the Examining Attorney, arguing that the majority of the NEXIS data base excerpts are from foreign publications and refer to persons in foreign countries. Applicant also argues that the number of telephone directory listings is low and points out that neither the NEXIS evidence nor the telephone directories shows the surname "Graingers." [FN4] Applicant contends that the mark will not be primarily viewed as a surname by purchasers but rather as a suggestive term referring to the grain-based nature of applicant's products.
The Office 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 (Fed.Cir.1985). 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 public. Our reviewing court has stated the following:
A trademark is a trademark only if it is used in trade. When it is used in trade it must have some impact upon the purchasing public, and it is the 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. [Emphasis in original.]
*2 In re Hutchinson Technology, Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed.Cir.1988), quoting In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421, 422 (CCPA1975).
At the outset, we concede that the undisputed evidence indicates the term "grainger" has no recognized meaning other than that of a surname. In this appeal, however, we must answer whether GRAINGERS is or is not "primarily merely a surname" within the meaning of the statute. We believe it is not.
We must consider the purchasing public's probable reaction when confronted with GRAINGERS. Our determination is, of course, subjective. That there are telephone directory listings [FN5] and that there are no other meanings of "graingers" in the English language does not mandate refusal in this case under the "primarily merely a surname" statutory language because, in our minds, the average member of the purchasing public would not, upon seeing the mark GRAINGERS, perceive it as a surname. See: In re Garan Inc., 3 USPQ2d 1537 (TTAB1987). We agree with applicant that purchasers, when encountering the mark GRAINGERS for crackers and snack chips made from grain, probably will view the mark as suggestive of the grain-based nature of the products.
The NEXIS listings of "Grainger" have limited persuasive impact inasmuch as the majority of them are from foreign publications. The Examining Attorney states that the foreign publications "are certainly circulated in the United States and read by the American public" (brief, p. 5). The problem with this statement is that it is not supported by any evidence; we can only speculate as to the extent of circulation in this country. In any event, it is the surname significance of the term in the United States which is determinative of the registrability issue. Thus, we are unable to conclude from the NEXIS data base evidence that there has been any meaningful exposure of "Grainger" as a surname in this country. The telephone directory listings do show individuals with "Grainger" as a surname, but that surname significance is apt to lose out to the suggestive significance of GRAINGERS when that term is used in connection with grain-based products. We also note that there is no evidence indicating that any individual associated with applicant bears the surname "Grainger." According to counsel, GRAINGERS was coined by applicant as a suggestive term to identify its products rather than because of any surname significance. We conclude, therefore, that GRAINGERS is not primarily merely a surname under Section 2(e)(3) of the Act.
Decision: The refusal of registration is reversed.
Members, Trademark Trial and Appeal Board
FN2. Attached to applicant's reply brief is an exhibit; more specifically, the exhibit is a photocopy of packaging for one of applicant's products bearing the proposed mark. At the oral hearing, the Examining Attorney objected to the introduction of this evidence, citing Trademark Rule 2.142(d). The objection is well taken in view of the untimely submission. Accordingly, the exhibit has not been considered in our determination.
FN3. Applicant counts twenty listings while the Examining Attorney claims twenty-six. Whether the listings specifically number twenty, twenty-one or twenty-six is not a material factor in this case.
FN4. This fact is of limited persuasive value. See, e.g., In re Directional Marketing Corp., 204 USPQ 675 (TTAB1979), and In re Luis Caballero, S.A., 223 USPQ 355 (TTAB1984).
FN5. There is no magic number of listings which is probative to show that a term is primarily merely a surname. See: In re Industrie Pirelli Societe per Azioni, 9 USPQ2d 1564 (TTAB1988). The fact that a relatively small number of listings is of record, however, would tend to indicate that "Grainger" is not a common surname in the United States.