Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE WOOLLEY'S PETITE SUITES
Serial No. 73/721,257
March 19, 1991
Mark I. Feldman of Rudnick & Wolfe for applicant
Trademark Examining Attorney
Law Office 7
(Thomas G. Howell, Managing Attorney)
Before Sams, Rooney and Cissel
Opinion by Rooney
An application was filed to register WOOLLEY'S PETITE SUITES [FN1] for hotel and motel services, claiming use since November 1985. Registration has been refused under Section 2(e)(3) on the ground that the term sought to be registered is primarily merely a surname. Applicant has appealed.
The Examining Attorney submitted evidence of the surname significance of the word WOOLLEY from a number of telephone directories and has also submitted evidence from the Lexis/Nexis database which shows further use as a surname. In addition to the foregoing, we note that Regn. No. 1,315,220, which applicant acquired by assignment during the course of the proceeding, was previously owned by Robert Woolley. [FN2] With respect to the holding that the mark as a whole is primarily merely a surname, the Examining Attorney noted that the addition of a common descriptive name for the goods or services to a surname does not overcome its surname significance. Upon remand, the Examining Attorney submitted further Lexis/Nexis evidence to show generic use by others of the term "petite suites", i.e., at the Hyatt Regency "(A)n additional $10 brings you either a petite suite or a Regency Club room on the VIP floor ..."; "The Four Seasons does have a fitness package, however: $478 for two nights in a petite suite, which includes a fitness breakfast ..."; "The Ritz-Carlton ... offers a one-night package Saturday or Sunday that includes petite suite accommodations, ..."; and finally, in speaking of the MGM Grand Hotel the comment is made that "(I)ts luxury reminded people of the grand hotels of Old Europe, with guest quarters called 'petite suites' instead of rooms." (Emphasis added in each quotation.)
Applicant argues that the Examining Attorney has dissected the mark and has failed to consider what the purchasing public would think when confronted with applicant's mark as a whole. In the applicant's opinion, when the mark is considered in its entirety, it is clear that the term WOOLLEY'S is part of a distinctive composite mark entitled to registration on the Principal Register. In resisting the holding that WOOLLEY'S is primarily merely a surname, applicant argues that the term WOOLLEY may be associated with sheep, which are associated with sleeping and, hence, the term WOOLLEY in applicant's mark suggests applicant's hotel and motel services. In addition, applicant takes the position that, even if the term WOOLLEY'S were primarily merely a surname, which, assertedly, it is not, the inclusion of PETITE SUITES in the mark would remove the surname significance of the term WOOLLEY'S. Applicant argues that the Examining Attorney relies on four Nexis articles to show the generic nature of the term PETITE SUITES and that, if only four references could be found in the entire Nexis database, this is strong evidence that the term is not generic considering the extensive amount of publicity and articles regarding all of the hotels in this country. At most, argues applicant, PETITE SUITES is suggestive of hotel and motel services.
*2 With respect to the surname significance of the term WOOLLEY'S, we are satisfied that the evidence of record establishes that the primary significance of WOOLLEY is that of a surname. As the Examining Attorney has noted, the addition of an apostrophe "s" to the name WOOLLEY does nothing to change the surname character of the term. See In re Directional Marketing, 204 USPQ 675 (TTAB 1979). In fact, since the apostrophe "s" indicates the possessive form of the name, its use probably reinforces its surname significance. Nor are we persuaded that WOOLLEY has any other meaning. Applicant's argument that there is a connection between the term "wooly" and sheep and that the image of sheep conjures up thoughts of sleep and consequently of applicant's hotel and motel services, is to no avail. In the first place, while the word "wooly" may have a connection with sheep which may, upon reflection, have some relation to sleep, the mark presented for registration herein does not include a design of sheep. [FN3] Nor are WOOLLEY'S and "wooly" interchangeable words. In a somewhat analogous situation, the Board rejected a similar argument in the case of In re Pickett Hotel Company, 229 USPQ 760 (TTAB 1986), when the applicant suggested that the surname, PICKETT, and the noun, "picket", were synonymous terms and that, therefore, PICKETT was not "primarily merely a surname."
Adding PETITE SUITES to the surname WOOLLEY'S does not create a mark which is anything other than primarily merely a surname. The evidence submitted by the Examining Attorney is sufficient to establish that in the hotel industry, the term "petite suites" has a common descriptive meaning. The quoted statements, showing use by some very well-known hotels, indicates that to those familiar with the hotel industry a "petite suite" is as normal an accommodation as a "single" or a "double" room or a "suite" of rooms. As to the number of references submitted by the Examining Attorney, we do not believe that the volume of references is the critical factor. Four references which clearly and unequivocally illustrate a common usage and understanding of the term in question by the relevant public should be just as effective to prove the point as would be a greater volume of cumulative evidence. Accordingly, in connection with applicant's services, we are convinced that "petite suites" is a common descriptive term. As such, it adds nothing in the way of trademark significance to the surname WOOLLEY'S. Consequently, the term, WOOLLEY'S PETITE SUITES, in its entirety, is primarily merely a surname and unregistrable on the Principal Register under Section 2(e)(3).
In view of the foregoing, the refusal to register is affirmed.
J. D. Sams
L. E. Rooney
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Applicant submitted a disclaimer of "Petite Suites" but the Examining Attorney refused to enter the disclaimer in the absence of an amendment to the Supplemental Register or a claim of distinctiveness under Section 2(f).
FN2. Applicant claims ownership of Regn. No. 1,315,220 for the mark PETITE SUITE registered January 15, 1985 on the Supplemental Register for motel services. The word, SUITE, was disclaimed apart from the mark as shown.
FN3. Applicant uses a design on its brochures which, in addition to the word mark, includes a group of sheep.