Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE NELSON SOUTO MAJOR PIQUET
Serial No. 530,283
July 29, 1987
Abelman Frayne Rezac & Schwab for Nelson Souto Major Piquet
Michael A. Szoke
Trademark Examining Attorney
Law Office 7
(Lynne Beresford, Managing Attorney)
Before Rooney, Simms and Seeherman
Members
Opinion by Rooney
Nelson Souto Major Piquet applied to register the mark N. PIQUET (shown below) for frames and cases for eyeglasses and sunglasses, claiming use since January 1985. By amendment
submitted with applicant's brief on appeal and accepted by the Examining Attorney in his responsive brief, the identification of goods now reads: eyeglasses, sunglasses and frames and cases for eyeglasses and sunglasses. Registration was refused under Section 2(e)(3) on the ground that N. PIQUET is primarily merely a surname.
Section 2(e)(3) provides that no mark by which an applicant's goods or services may be distinguished shall be refused registration on account of its nature unless it consists of matter which is primarily merely a surname. It is the Examining Attorney's burden in the first instance, to prove prima facie that a term is primarily merely a surname. See In re Standard Elektrik Lorenz Aktiengesellschaft, 152 USPQ 563 (CCPA 1967).
The Examining Attorney has placed in the record copies of pages from the telephone directories of the District of Columbia, Greater Dallas and Manhattan in which are found a total of 5 listings of families with the surname PIQUET. In addition, excerpts taken from the Lexis/Nexis data base illustrate fifteen or more instances of individuals named PIQUET. Additionally, the Examining Attorney notes that, as used on the specimens, the mark is presented in the manner of a surname and that, moreover, it is applicant's surname. These facts, argues the Examining Attorney, make it implausible that a purchaser would understand the mark N. PIQUET to be a name for a two-handed card game or a variation of the word 'picket' as contended by applicant. We affirm for the following reasons.
The question of whether or not a term is primarily merely a surname within the meaning of Section 2(e)(3) depends upon what is perceived by purchasers to be its primary significance. See In re Luis Caballero, S.A., 223 USPQ 355 (TTAB 1984) and cases cited therein. To be more specific, if the principal or ordinary significance of the term is that of a surname, it is prohibited from registration. On the other hand, if there is a readily recognized meaning of the term apart from its surname significance, registration should be granted. This does not mean, however, that all that is necessary to overcome a prima facie showing of surname significance is that the applicant uncover a dictionary entry for the term in question. See: In re The British Oxygen Company Limited, 161 USPQ 242 (TTAB 1961) wherein despite other meanings of the name Boyle, the primary significance was found to be a surname; Ex-parte Reeves Brothers, Inc., 84 USPQ 19 (Comm'r 1949), in which, finding REEVES to be unregistrable under Section 2(e)(3), the Commissioner stated that '(T)he fact that other meanings may exist does not necessarily indicate that a word would ordinarily have other than its primary meaning, and the fact that lexicographers or others might recognize a possible unusual meaning is not controlling'. Cf. In re Hunt Electronics Co., 155 USPQ 606 (TTAB 1967), wherein HUNT, a commonly used dictionary term, was found registrable despite surname significance.
*2 The combination of factors presented by the Examining Attorney in this case constitutes sufficient evidence, in our view, to establish that the term sought to be registered is primarily merely a surname. [FN1] Contrary to applicant's argument, its use on the specimens in the manner of a signature, i.e., using first name initial followed by a surname, reinforces, rather than diminishes the surname significance of the term 'PIQUET' [See: In re Taverniti, SARL, 225 USPQ 1263 (TTAB 1985), request for reconsideration denied, 228 USPQ 975 (TTAB 1985)], and as noted in the Taverniti case, at page 1264:
. . . both the Court of Appeals for the District of Columbia and our reviewing court, the Court of Customs and Patent Appeals (now merged into the Court of Appeals for the Federal Circuit), have held that the addition of initials to a term which is primarily merely a surname cannot serve to remove the term from that category. See: Sears, Roebuck and Co. v. Watson, 204 F.2d 32, 96 USPQ 360 (CA DC 1953) ['J C HIGGINS' primarily merely a surname], and In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (CCPA 1953) ['S. SEIDENBERG & CO.'s' primarily merely a surname]
With regard to the dictionary meaning cited, the name of a relatively obscure card game is unlikely to be known to purchasers and is certainly not the ordinary meaning of the term.
As to the considerable investments applicant has made in promoting and advertising its mark, these factors do not enter into the determination as to registrability of a surname unless registration has been sought under Section 2(f), which is not the case here.
In view of the foregoing, the refusal to register is affirmed.
L. E. Rooney
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. In view of the fact situations in each of the cases cited in the dissent, In re Hilton Hotels Corp., In re Hale Co., Inc. and In re Penn Dairies, Inc., infra, we do not believe these decisions reflect any departure from the effect of the Seidenberg decision, infra.
DISSENTING OPINION
E. J. Seeherman
Member
I disagree with the majority's decision that N. PIQUET is primarily merely a surname and registration should be refused pursuant to Section 2(e)(3) of the Act. While I accept the determination that PIQUET per se would be prohibited as being primarily merely a surname, I believe that the depiction of the mark in the manner of a signature, with the addition of the initial 'N.', conveys the impression that the mark is a personal name and not a surname. Therefore, I disagree with the majority's views that the addition of the initial 'N' and the depiction as a signature emphasizes the surname significance of the mark as a whole.
The general rule that the addition of a 'first name initial' does not remove a mere surname from being considered to be 'primarily merely a surname' stems from In re I. Lewis Cigar Mfg. Co., supra, in which 'S. SEIDENBERG & CO'S.' was found to be primarily merely a surname and hence unregistrable under Section 2(e)(3). In that case, the court found 'that 'Seidenberg' is clearly a surname which can have no other meaning or significance than that of a surname . . .' and that the addition of the single initial was not sufficient to remove it from that category.
*3 The 'Seidenberg' case was an early decision interpreting Section 2(e)(3) of the Trademark Act of 1946. Under the former Act of 1905, registration of marks consisting of the names of individuals and, by interpretation, surnames as being the significant portion of an individual's name, was prohibited. Section 5 of the Trademark Act of 1905, Ex parte Dallioux, 83 USPQ 262 (Comr. Pats. 1949). It appears some of the general reluctance to register surnames and individual names under the previous Act had a residual influence, and the Court accordingly interpreted the restrictions of Section 2(e)(3) broadly. [FN1]
Since the 'Seidenberg' case was decided, the courts and Board have interpreted Section 2(e)(3) to narrow its restrictions. See, In re Hilton Hotels Corp., 166 USPQ 216 (TTAB 1970), [LADY HILTON not primarily merely a surname]; In re Hale Co., Inc., 158 USPQ 171 (TTAB 1968) [HALE OF VERMONT not primarily merely a surname]; In re Penn Dairies, Inc., 137 USPQ 168 (TTAB 1963) [LADY PENN not primarily merely a surname].
It is clear that the name of an individual is registrable. [FN2] Further, it is clear that a mark consisting of a given name and surname, even if not the name of a particular living individual, is also registrable, and is not considered to be primarily merely a surname under Section 2(e)(3). I suggest that the addition of an initial to a surname also gives the impression that the mark is the name of a particular individual, and is not primarily merely a surname. This impression is especially strong when the mark is depicted in the manner of a signature.
We are, of course, bound by the decision of our reviewing court in the 'Seidenberg' case [FN3] that an initial coupled with a word that has no other significant meaning than that of a surname is precluded registration under Section 2(e)(3) of the Act. However, I see no reason to give this decision a broader interpretation, and apply it to a situation where, by its depiction in the manner of a signature, with a first name initial, the designation N. PIQUET conveys the primary significance that it is the name of a particular individual, in this case the applicant himself. [FN4]
For the above reasons, I would reverse the refusal of registration.
FN1. For example, the Court opined that the addition of a given name to a surname, as in ANDRE DALLIOUX, Ex parte Dallioux, supra, had the same effect as the addition of initials to a surname, as in J.C. HIGGINS, In re Sears, Roebuck & Co., supra. In view of the Court's decision that S. SEIDENBERG & CO'S. was primarily merely a surname, the clear implication is that a mark consisting of a given name and surname is primarily merely a surname and should be refused registration.
FN2. Section 2(c), 15 USC 1052(c).
FN3. Decisions of the Court of Customs and Patent Appeals are binding precedent not only on this Board, but on the Court of Appeals for the Federal Circuit, which may overrule a prior holding of the Court of Customs and Patent Appeals only by an en banc decision. In re Taverniti, SARL, supra, at 976, and cases cited therein.
FN4. Under the 1905 Act the name of an individual could be registered if it were written in a particular or distinctive manner. The 1946 Act, which was intended to liberalize registration, should not be interpreted so that the depiction of a name in the distinctive manner of a signature becomes a factor militating against registration.