If It Sounds Like a Surname . . .

If the primary significance of a word mark to the purchasing public is that of a surname, then a trademark application for that word mark may be refused registration unless there is a showing of acquired distinctiveness. Earnhardt v. Kerry Earnhardt, Inc., 864 13- 15F.3d 1374, 123 USPQ2d 1411 (Fed. Cir. 2017); see also In re Beds & Bars Ltd., 122 USPQ2d 1546, 1548 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1277 (TTAB 2016); In re Integrated Embedded, 120 USPQ2d 1504 (TTAB 2016); 15 U.S.C. § 1052(e)(4) (“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . consists of a mark which, . . . is primarily merely a surname.”).

If the mark appears to be a rare surname, then this would weigh in favor of registration, but it would not be dispositive of the inquiry. In re Adlon Brand GmbH & Co., 120 USPQ2d 1717, 1721 (TTAB 2016) (“the degree of a surname’s rareness is not dispositive of the amount or kind of evidence the entire record must contain to establish that a mark’s primary significance to the purchasing public is that of a surname; the amount or kind of evidence necessary to demonstrate that the term is ‘primarily merely’ a surname will vary on a case-by-case basis”).

There is no minimum number of persons who must have, or be aware of, a surname in the United States for a mark consisting of that surname to be found to be primarily merely a surname under Section 2(e)(4). In re Adlon, 120 USPQ2d at 1724; see also In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989) (per curiam) (holding that despite the rarity of “Pirelli” as a surname, the relevant public still would view it primarily as a surname).

WEALE Sounds Like a Surname

The TTAB recently affirmed a refusal to register WEALE for various body care products, deeming the mark to be primarily merely a surname under Section 2(e)(4). In re Weale Care, LLC, Ser. No. 90756950, 2023 USPQ2d — (TTAB Sept. 26, 2023).

Database and website evidence identified fewer than 150 individuals with the surname WEALE, so the TTAB concluded that WEALE was a “rare surname.” But the TTAB also found that WEALE has the structure and pronunciation of a surname.

Citing In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004), the TTAB stated that WEALE “would not be perceived as an initialism or acronym . . . and does not have the appearance of having been coined by combining a root element that has a readily understood meaning in its own right with either a prefix or a suffix.”

In short, WEALE sounds like a surname with the structure or format of a surname.

Applicant argued that “weal” (as the phonetic equivalent of “weale”) had a recognized meaning of “happy or prosperous state”; but there was no evidence of record that indicates these meanings are readily recognized by the average consumer. The TTAB found that uncovering a dictionary reference for the term in question was not enough. See In re Nelson Souto Major Piquet, 5 USPQ2d 1367, 1367-68 (TTAB 1987).

The TTAB concluded that “[w]hile WEALE may be rarely encountered as a surname it possesses the structure and pronunciation of one, and there is insufficient evidence on this record of a recognized non-surname significance of the term.” So, the refusal was affirmed.

 

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.