Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE HAMILTON PHARMACEUTICALS, LTD.
Serial No. 74/107,390
June 23, 1993
Hearing: March 4, 1993
Paul F. Kilmer of the firm of Gadsby & Hannah for applicant
Andrew J. Zulieve
Trademark Examining Attorney
Law Office 7
(David E. Shallant, Managing Attorney)
Before Simms, Cissel and Hohein
Hamilton Pharmaceuticals, Ltd. has filed an application for registration of the mark "HAMILTON PHARMACEUTICALS" for "pharmaceutical products". [FN1]
Registration has been finally refused under Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 1052(e)(3), on the ground that the mark applicant seeks to register is primarily merely a surname.
Applicant has appealed. Briefs have been filed and an oral hearing was held. We affirm.
At the outset, it is well settled that whether a mark is primarily merely a surname depends upon whether its primary significance to the purchasing public is that of a surname. The burden is upon the Examining Attorney, in the first instance, to present evidence sufficient to make out a prima facie showing in support of the contention that a particular mark is primarily merely a surname. 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) and In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421, 422 (CCPA 1975). Whether a term sought to be registered is primarily merely a surname within the meaning of Section 2(e)(3) of the Trademark Act must necessarily be resolved on a case by case basis and, as is the situation with any question of fact, no precedential value can be given to the amount of evidence apparently accepted in a prior proceeding. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed.Cir.1985). However, the inclusion in a mark of a generic or merely descriptive term does not preclude its surname significance if, when considered as a whole, the primary significance of the mark to the purchasing public is that of a surname. See In re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed.Cir.1988); In re Woolley's Petite Suites, 18 USPQ2d 1810, 1812 (TTAB 1991); and In re E. Martinoni Co., 189 USPQ 589, 591 (TTAB 1975).
With respect to the surname significance of the term "HAMILTON," the Examining Attorney has made of record copies of pages from five different telephone directories (white pages) covering the years 1989 and/or 1990. These pages show that listings of individuals having the surname "Hamilton" number 192 for Washington, D.C.; 295 for Philadelphia, Pennsylvania; 372 for Indianapolis, Indiana; 746 for Houston, Texas; and 188 for San Francisco, California. The Examining Attorney has also introduced into the record a copy of the pertinent pages from E. Smith, American Surnames (1972) at 301-02, which lists "Hamilton" as the 92nd most common surname in the United States. [FN2] In view of such evidence, as well as the concession by applicant's counsel at the oral hearing that "HAMILTON" has surname significance, we are of the opinion that the Examining Attorney has established a prima facie case that "HAMILTON" is primarily merely a surname. Consequently, and since the inclusion of the generic term "PHARMACEUTICALS" in the mark "HAMILTON PHARMACEUTICALS" does not create a mark which, when considered as a whole, has ordinary significance other than that of primarily merely a surname, the burden is upon applicant to rebut the Examining Attorney's showing.
*2 Applicant takes the position that, notwithstanding its admitted surname significance, the term "HAMILTON" is not primarily merely a surname inasmuch as such term has significance as both a readily known geographical designation and a common given name. In support of its contentions, applicant has furnished copies of the following:
(i) pages from WEBSTER'S II New Riverside University Dictionary (1988), which under the category of "Geographic Entries" defines "Fairbanks" at 1457 as a "City of central Alas. NNE of Anchorage. Pop. 22,645" and "Hamilton" at 1466 as, inter alia, "3. Cap. of Bermuda on Bermuda Is. Pop. 2,060 4. City of S Ont., Canada, at W end of Lake Ontario SW of Toronto. Pop. 312,003. 5. City of N central North Is., New Zealand, SSE of Auckland. Pop. 87,968. ... 7. City of SW Ohio N of Cincinnati. Pop. 63,189". Under the category of "Bibliographical Entries," such dictionary also lists "Fish, ... Hamilton" at 1379 as "1808-93. Amer. politician & public official" and "Smith, Hamilton Othanel" at 1418 as "b. 1931. Amer. microbiologist (Nobel, 1978)";
(ii) pages from Webster's New Collegiate Dictionary, which defines "Hamilton" as "1 city SW Ohio N of Cincinnati pop 67,865 2 town & port * of Bermuda pop 2,127 ... 4 city & port Canada in SE Ont. on Lake Ontario pop 309,173 5 Borough New Zealand on cen North I. pop 71,600";
(iii) pages from Webster's Seventh New Collegiate Dictionary (1972), which, in a section entitled "A PRONOUNCING VOCABULARY OF COMMON ENGLISH GIVEN NAMES," lists "Hamilton" at 1178 as being derived, like "Harris" and many other first names, "[fr. a surname]"; [FN3]
(iv) excerpts of articles from four of 3,922 magazine and newspaper stories, retrieved from an October 21, 1991 search of Mead Data Central, Inc.'s "NEXIS" database, and a full article (undated book review) from the Washington Post, all of which mention the name "Hamilton Jordan" and appear to refer to the same Carter administration official;
(v) excerpts of articles from three of 338 magazine and newspaper stories, retrieved from an October 21, 1991 search of the "NEXIS" database, and a full article from the November 7, 1980 New York Times, all of which mention the name "Hamilton Smith," although in reference to (apparently) three different individuals (including the American microbiologist mentioned previously and the horse trainer noted later on);
(vi) an excerpt of an article from one of 2,059 magazine and newspaper stories, retrieved from an October 21, 1991 search of the "NEXIS" database, and a full copy of such article from the February 4, 1990 Chicago Tribune, which mention four generations of Congressmen named "Hamilton Fish," along with a fifth member of such family who is also so named [FN4];
(vii) excerpts of three other articles from magazine, newspaper and wire-service stories, retrieved from an October 21, 1991 search of the "NEXIS" database, which reveal the names of Canadian art center director "Hamilton Southam" and horse trainer "Hamilton Smith," along with a reference to a deputy base commander whose first name is "Hamilton". A full copy of the article on horse trainer Hamilton Smith, which appeared in the August 31, 1980 Washington Post, is also included;
*3 (viii) file histories of Reg. Nos. 1,594,862 and 1,574,746, respectively issued to different registrants on January 2. 1990 and May 8, 1990, in which the mark "HAMILTON" was registered in both instances without a showing of acquired distinctiveness;
(ix) eight other federal registrations comprising or including the term "HAMILTON," issued to three different registrants, "in which a showing of [acquired] distinctiveness was not required" according to applicant; [FN5]
(x) printouts from a search on October 21, 1991 of the "NEXIS" database indicating that "HAMILTON, ONTARIO" appears in 2,900 stories, "FAIRBANKS, ALASKA" appears in 3,006 stories and "HAMILTON, OHIO" appears in 2,337 stories;
(xi) pages from Britannica Atlas showing that in addition to "Hamilton, Ber.," "Hamilton, Ont., Can." and "Hamilton, N.Z.," the term "Hamilton" is the name of 16 geographic places in the United States, including "Hamilton, Ohio," and is part of the names of several lakes, mountain peaks and other geographical areas, such as "Hamilton, Lake," "Hamilton, Mount" and "Hamilton Air Force Base";
(xii) the opinion in Manchester Hosiery Mills v. Colonial Art Co., Inc., 119 USPQ 351 (Comm'r Pats.1958), in which appears the statement that " 'HAMILTON' and 'HAMPSHIRE' are both surnames and geographical names, and ... this fact makes the marks ['LADY HAMILTON' and 'LADY HAMPSHIRE'] readily distinguishable"; and
(xiii) various third-party registrations on the Principal Register for marks which, applicant contends, have surname significance and ranked higher (i.e., more common) than "Hamilton" in E. Smith, American Surnames (1972), but which were registered without resort to the provisions of Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). [FN6]
Noting that its business is located in Hamilton, Bermuda, applicant contends that the evidence it has submitted "demonstrates a significant number of uses of the term 'Hamilton' as a geographic location and recognition of that geographic meaning by a significant segment of the population". Specifically, in addition to asserting that "[m]any U.S. Citizens vacation in Bermuda and are familiar with the city of Hamilton located there," applicant points out that the evidence establishes the existence of Hamilton, Ohio and Hamilton, Ontario, Canada. Applicant particularly takes issue with the Examining Attorney's contentions that the former is an "obscure town" in Ohio and that it is "doubtful" that a significant number of purchasers in the United States have ever heard of the latter city. In this regard, applicant argues that the Examining Attorney has failed to reconcile the population of, and numerous "NEXIS" references to, Hamilton, Ohio with the holding in In re Colt Industries Operating Corp., 195 USPQ 75, 78 (TTAB 1978), that "the term 'Fairbanks,' with a considerably smaller population, and smaller number of Nexis references, was held to be not primarily merely a surname on the basis of its additional geographic significance".
*4 Similarly, with respect to Hamilton, Ontario, applicant insists that "the numerous references to this city in American publications, as set forth in the Nexis evidence submitted, clearly establish that a significant segment of the American purchasing public has in fact heard of Hamilton, Ontario". Additionally, applicant maintains that the holding in Manchester Hosiery Mills v. Colonial Art Co., Inc., supra, that the term " 'Hamilton' is both a surname and a geographic name" is evidence which "conclusively establishes that 'Hamilton' is not primarily merely a surname".
We agree with the Examining Attorney, however, that unless there is a readily recognized meaning for a term apart from its surname significance, the fact that other meanings for the term exist does not necessarily indicate that the term would have a primary meaning to the purchasing public other than that of its ordinary surname significance. See In re Nelson Souto Major Piquet, 5 USPQ2d 1367, 1367-68 (TTAB 1987), citing In re British Oxygen Co. Ltd., 161 USPQ 242 (TTAB 1961) and Ex parte Reeves Brothers, Inc., 84 USPQ 19 (Comm'r Pats.1949). In particular, as to the geographical significance of the term "HAMILTON," including its meaning as cities in Ohio and Ontario, we concur with the Examining Attorney's assessment that "there is no persuasive evidence on the record that would indicate any significant consumer recognition of and association between the Applicant's mark and these geographical locations". Unlike the case of In re Colt Industries Operating Corp., supra, in which the Board found, in light of the meager showing of 13 telephone directory listings for the surname "FAIRBANKS," that "its significance as the name of a well known city in Alaska ... is just as dominant in character as the surname significance" (emphasis added) and thus "it cannot be said that the primary significance of the word 'FAIRBANKS' to the purchasing public would be that of a surname," we share the Examining Attorney's observation that this appeal presents a far stronger showing of surname significance and that, by comparison, the geographical meaning of the term "HAMILTON" is relatively minor.
Specifically, we observe that while Hamilton is the capital of Bermuda, it is notably small in population, in addition to being located in a tiny British colony. [FN7] Moreover, in contrast to Fairbanks, which while rather small in population is nevertheless one of only a few major cities in Alaska, neither Hamilton, Ohio nor Hamilton, Ontario has been shown to have a similar renown as geographical locations which, despite their larger populations, would be as recognizable to the average purchaser in the United States as is Fairbanks, Alaska. [FN8] The mere fact that applicant's search of the "NEXIS" database uncovered approximately the same number of stories on Hamilton, Ontario and Hamilton, Ohio as on Fairbanks, Alaska plainly does not establish that the former, being located in far more populous and industrialized areas, are as well known to the average consumer as the latter [FN9] since, as a general proposition, the name of a major city in a large but relatively unpopulated area such as Alaska is much more likely to be impressed upon the public consciousness than larger towns and cities, like Hamilton, Ohio and Hamilton, Ontario, which are situated in comparatively smaller but more densely populated localities.
*5 Finally, as to the previously quoted statement from the Manchester case, supra, suffice it to say that, rather than involving the issue of whether a term is primarily merely a surname, the case decided only that two marks were not confusingly similar due to the fact that " 'Hamilton' and 'Hampshire' are both surnames and geographical names" and, thus, the marks containing such terms are readily distinguishable. However, aside from the acknowledgment, which the other evidence presented by applicant clearly shows, that "HAMILTON" has some significance as a geographical term, the case does not hold that the geographical significance of "HAMILTON" is as dominant as its surname significance or that the primary significance of such term to the purchasing public is something other than that of a surname. The fact, therefore, that "HAMILTON" has been shown to have some minor significance as a geographical term does not dissipate its primary significance as a surname. See, e.g., In re Possis Medical, Inc., 230 USPQ 72, 73 (TTAB 1988) and In re Picone, 221 USPQ 93, 95 (TTAB 1984).
With respect to applicant's contention that "HAMILTON" also has meaning to the average consumer as a given name, we think that, on balance, the evidence presented by applicant demonstrates that such term is quite rare as a given name. The probative value of the listing of the name in the section of Webster's Seventh New Collegiate Dictionary entitled "A PRONOUNCING VOCABULARY OF COMMON ENGLISH NAMES" is heavily outweighed by the fact that, of the thousands of newspaper and magazine stories discovered during various searches by applicant of the "NEXIS" database, at most only 11 individuals (including five in the same family lineage) with the first name of "Hamilton," [FN10] which the cited dictionary indicates is derived from the surname "HAMILTON," [FN11] were found. Thus, instead of "clearly establishing the significance of the term 'Hamilton' as a well-known first or given name," as urged by applicant, we believe that in contrast to such names as "Thomas," "Allen," "Mitchell," "Stewart," "James" and "Henry," which are commonly used as both surnames and given names, the evidence of record shows that usage of the common surname "HAMILTON" as a given name is highly unusual. Consideration of such evidence in comparison to the large number of listings of individuals having the surname "HAMILTON" demonstrates that the given name significance of such designation is relatively small.
Applicant nevertheless asserts that the evidence it has furnished "clearly indicates widespread use of the term 'Hamilton' as a first or given name" inasmuch as the evidence "clearly shows that the general public (and a significant portion of the general public by virtue of the circulation of the magazines and newspapers referenced) has seen many references to 'Hamilton' used as a first or given name". These uses, according to applicant, are so numerous as to have "established in the minds of the general public the significance of the term 'Hamilton' as a first or given name". To us, however, the record reveals that while a few individuals, particularly Hamilton Jordan in the Carter administration, Hamilton Smith in the field of microbiology and Hamilton Fish in Congressional politics, have at one time or another acquired a certain degree of notoriety, it cannot be said that their renown presently is such that to the average member of the purchasing public, the term "HAMILTON" readily denotes a given-name significance. [FN12] We consequently believe that notwithstanding the many references found by applicant to a comparatively few notable individuals whose given name is "HAMILTON," the primary significance of such term to the purchasing public is that of a surname.
*6 Lastly, and essentially as a supplement to the contentions discussed above, applicant raises an equitable or fairness argument that because ten of the third-party registrations of record, including two which were recently issued, evidence that the Patent and Trademark Office has not treated the term "HAMILTON" as primarily merely a surname, applicant is also entitled to a registration on the Principal Register without being required to show acquired distinctiveness for its mark. The absence of copies of the file or prosecution histories for eight of the registrations, however, precludes assigning such evidence any probative value regarding the asserted practice of the Office with respect to the registrability of the term "HAMILTON". [FN13] In the cases of the two remaining registrations, which issued in 1990, there is no indication in one as to why the Examining Attorney did not consider the term "HAMILTON" as being primarily merely a surname because the issue was never raised, while in the other a different Examining Attorney, in his "Notes to the File," states only that "[t]hough a surname, HAMILTON is also [a] proper name (signer of dec [laration]--Ralph Hamilton Lewis) and [a] geographic designation (see attached)". The sole document accompanying such statement, however, is a single page from what appears to be a gazetteer. [FN14] It thus would seem that in making his evaluation, the Examining Attorney in that case did not have before him the appreciable amount of evidence of surname significance which the Examining Attorney has presented in this case. The third-party registrations for the term "HAMILTON," like the other evidence submitted by applicant, are simply inadequate to rebut the prima facie showing made herein.
In conclusion, we think that this case is most analogous to In re Harris-Intertype Corp., supra at 239-40, in which the mark "HARRIS," while shown to have other meanings, including geographical connotations, was still held to be primarily merely a surname. Similarly, although applicant has demonstrated that the term "HAMILTON" additionally has some geographical and given-name significance, the record reflects that it is the surname significance of such term which is far more common and which predominates. Accordingly, it is our view that as applied to "pharmaceutical products," applicant has failed to rebut the Examining Attorney's showing that the primary significance to the purchasing public of the mark "HAMILTON PHARMACEUTICALS," when considered as a whole, is only that of a surname.
Decision: The refusal under Section 2(e)(3) is affirmed.
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 74/107,390, filed on October 19, 1990, which alleges a bona fide intention to use the mark in commerce. The word "PHARMACEUTICALS" is disclaimed.
FN2. As the Board noted in In re Pickett Hotel Co., 229 USPQ 760, 761 (TTAB 1986) at n. 2, "[t]his publication apparently ranks surnames according to an estimated number of persons". The number of persons estimated to have the surname "Hamilton" is indicated as 179,400, while those with the surname "Harris," which was held to be primarily merely a surname in In re Harris-Intertype Corp., supra at 240, have the 16th most common surname and number 587,800. E. Smith, American Surnames, supra.
FN3. In a preface thereto, it is stated that: "The following vocabulary presents given names that are most frequent in English use." No indication is given, however, as to the criteria utilized in selecting the names appearing on the list, which include, for example, such Spanish-derived names as Carlos, Franciso and Pedro, and such German-origin names as Dieter, Helmut and Siegfried.
FN4. The printout of the "NEXIS" excerpt, however, indicates that it is one of 36 stories which refer to "Hamilton Fish". Nevertheless, for purposes of this appeal, we accept applicant's assertion that its research discovered 2,059 stories which mention such name.
FN5. With but one exception, all of the registrations issued under the Trademark Act of February 20, 1905, which among other things, generally prohibited the registration of a "mark which consists merely in the name of an individual, firm, corporation, or association not written, printed, impressed, or woven in some particular or distinctive manner". Section 5 of the Trademark Act of February 20, 1905 and 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 13:11 (3d ed. 1992) at n. 6. We note that of the seven registrations issued under the Trademark Act of February 20, 1905 (in effect until 1947), four are for the term "Hamilton," which in three of the four appears in either Old English or script lettering, while the remaining ones show the term "HAMILTON" in block lettering. The evidence, therefore, can scarcely be said to establish a practice or policy on the part of the Patent and Trademark Office that, as reflected by the apparent lack of proof of secondary meaning, the primary significance of the term "HAMILTON" is not that of a surname.
FN6. Specifically, the registered marks, which consist of or include the following names, and the surname rankings therefor (shown in parenthesis) are: "Thomas" (12th), "Allen" (23rd), "Mitchell" (35th), "Stewart" (50th) and "James" (82nd). Applicant also submitted five third-party registrations for the name "Henry," which as a surname is ranked 137th and thus is lower (i.e., less common) than "Hamilton," but which registered on the Principal Register without, apparently, any showing of acquired distinctivenes.
FN7. We judicially notice in this regard that The Random House Dictionary of the English Language (2d ed. 1987) at 197 defines "Bermuda" as "a group of islands in the Atlantic, 580 mi. (935 km) E of North Carolina: a British colony; resort. 53,500; 19 sq. mi. (49 sq. km). Cap.: Hamilton."
FN8. The Examining Attorney also argues that the geographical impact of "HAMILTON" "is drastically minimized, if not negated entirely," by the facts that "the cities of HAMILTON, Ontario and HAMILTON, Ohio, respectively, were named after George Hamilton, who laid out the original town of Ontario and Alexander Hamilton, a United States statesman". Although the Examining Attorney cites "5 The New Encyclopedia Britannica 658, 659 (1988)" as authority for such facts, applicant correctly points out in its reply brief that, inasmuch as a copy thereof does not appear in the record, "there is no evidence or precedent supporting the Examining Attorney's assertion". Nevertheless, judicial notice may properly be taken of standard reference works, such as encyclopedias. See In re Hartop & Brandes, 311 F.2d 249, 135 USPQ 419, 420 (CCPA 1962) at n. 6. Consequently, even if judicial notice is taken of the additional facts represented by the Examining Attorney, we think that they simply confirm, as noted in In re Champion Int'l Corp., 229 USPQ 550, 551 (TTAB 1985), "the normal naming of a place ... after an individual," but such does not necessarily diminish whatever geographical significance a surname like "HAMILTON" may also have to the purchasing public.
FN9. As Judge Rich commented in In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1451 (Fed.Cir.1987): "It is indeed remarkable to see the thoroughness with which NEXIS can regurgitate a placename casually mentioned in the news".
FN10. Besides Hamilton Jordan and three seemingly different individuals named Hamilton Smith, the number of persons with such first name includes five generations of the Hamilton Fish family as well as a Canadian art center director and a deputy commander (surname unknown) of a military base.
Appellant cites the listing of "Harris" under "Common English Given Names" in Webster's Seventh New Collegiate Dictionary. However, the listing is accompanied by the notation that it is derived from a surname, and we agree with the Board that a mere listing in a dictionary does not indicate a general acceptance thereof as a given name.
FN12. Applicant, in its reply brief, stresses that unlike the name "MCKINLEY" in In re Champion Int'l Corp., supra, "[a]pplicant has never argued that the term 'HAMILTON' should be registered because of its historical significance as one particular person". Nevertheless, while applicant does not so contend, we note that such an argument would not aid applicant. As discussed in In re Pickett Hotel Co., supra at 761-62, "[t]he decisions concerning historical names draw a line between names which are so widely recognized that they are almost exclusively associated with the historical figures ... and names which are semihistorical in character". Here, the individuals having the given name "HAMILTON" are at best semihistorical figures and, therefore, the significance of such name is not so great as to rival or eclipse the surname significance of the term.
Appellant cites the registration of "HARRIS" (to other owners) on the principal register without reliance on subsection 2(f), as shown by Registration Nos. 743,358 (January 8, 1963) and 888,113 (March 24, 1970). We do not know what evidence was before the PTO when the applications were considered, so the citations have no precedential value.
FN14. In addition to indicating cities in Ohio, Ontario, Bermuda and New Zealand, "Hamilton" is also listed as the name of eight other small towns or cities in the United States as well as part of the names of two mountain peaks and several bodies of water.