Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE S. OLIVER BERND FREIER GMBH & CO. KG
Serial No. 73/743,027
August 13, 1991
Edwin D. Schindler for applicant
Catherine K. Krebs
Trademark Examining Attorney
Law Office 5
(Paul Fahrenkopf, Managing Attorney)
Before Rooney, Cissel and Seeherman
Opinion by Rooney
An application was filed to register S. OLIVER for hand bags, umbrellas and parasols. Use since October 1, 1984 was alleged.
Registration was finally refused on the ground that the term sought to be registered is primarily merely a surname. The Examining Attorney submitted copies of pages from the Houston, Greater Miami and Los Angeles telephone directories evidencing more than 600 listings of customers with the surname "Oliver". It is the Examining Attorney's position that OLIVER is a surname and that the addition of the letter "S" merely adds to the surname significance of the name. The Examining Attorney notes further that the letter "S" is also the abbreviation for "Signor" which means "Mister" and that that common title also reinforces the surname significance.
Applicant argues, on the other hand, that "Oliver" is a given name as well as a surname; that if, as the Examining Attorney contends, "S" stands for "Signor" or "Mister", then the question of registrability of S. OLIVER is more analogous to that of LADY HILTON [In re Hilton Hotels Corp., 166 USPQ 216 (TTAB 1970) than it is to S. SEIDENBERG & Co's." (In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (CCPA 1953) ]. Applicant also notes that the registration cited against applicant's mark (which was withdrawn during the prosecution of the application) was for the given name OLIVER which was registered on the Principal Register. It is argued that the Office has thus recognized that OLIVER is not primarily merely a surname.
There appears to be no dispute that OLIVER is a surname. The telephone director evidence conclusively establishes that fact and applicant does not appear to dispute it. The question here is whether it is "primarily merely" a surname as the statute requires it to be before registration is prohibited under Section 2(e)(3).
As we have said in the cases of other alleged marks which consist of a term which is primarily merely a surname and a preceding initial, the presence of an initial before a surname normally would be viewed as reinforcing the surname significance thereof. [FN1] However, in this case it has been noted that OLIVER is a given name as well as a surname and it appears that the given name significance is as well known as the surname meaning. In this case, an initial before the name OLIVER may well be perceived as indicating two given names as in S. Oliver (Bowles) or S. Oliver (Lane). There is, therefore, a certain ambiguity present in this mark so that it cannot be predicted whether the perception of the consuming public would be as a surname or a given name. In view thereof, we will resolve that doubt in favor of the applicant.
*2 Accordingly, the refusal to register is reversed.
L. E. Rooney
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. In re Nelson Souto Major Piquet, 5 USPQ2d 1367 (TTAB 1987); In re Taverniti SARL, 228 USPQ 975 (TTAB 1985); and In re Lewis Cigar Mfg. Co., 91 USPQ 294 (Com'r 1951) affd 205 F.2d 204, 98 USPQ 265 (CCPA 1953).
I concur in the reasoning and the result of the majority opinion. I would also reverse the refusal for an additional reason. It is clear that OLIVER per se would not be considered primarily merely a surname in view of its recognition as a given name, a position which was implicitly accepted by the Patent and Trademark Office in registering the mark OLIVER on the Principal Register. The only way the addition of "S." to OLIVER could transform the term OLIVER into having surname significance is by making it appear that S. OLIVER is the name of an individual with a first name represented by the initial "S" and the surname of OLIVER. However, when the mark is viewed in this manner the mark as a whole is not primarily the surname OLIVER; rather, it would be perceived as the name of a person. To treat S. OLIVER as primarily merely a surname would result in the anomalous situation of allowing registration of what is arguably the "surname" portion of the mark when that term is used alone, but when an initial is added to the non-surname term so that it appears to be a person's name, the name is refused registration because the surname significance of one portion of the mark becomes evident. Such a result is not mandated by the Statute, case law or common sense.