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Home | BakerHostetler

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Antitrust Advocate

Courts Split on FTC’s Authority to Issue Noncompete Rule

A mark that is “primarily merely a surname” cannot be registered on the Principal Register per Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4). Even though a surname may be rare, in In re Weale Care, LLC, Serial No. 90756950 (TTAB Sept. 26, 2023) (originally designated as precedential, then not), that alone will not overcome a surname refusal.

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In Weale, the applicant sought registration of WEALE for a variety of skin and body care products and cosmetics. A United States Patent and Trademark Office (USPTO) examining attorney refused registration, asserting WEALE is primarily merely a surname. The applicant appealed and fared no better with the Trademark Trial and Appeal Board (TTAB).

In considering whether the mark was primarily merely a surname, the TTAB applied four factors commonly known as the Benthin factors, which were first enumerated in In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995). The factors are:

1.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Whether the surname is rare.

2.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Whether anyone connected with the applicant has that surname.

3.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Whether the term has any recognized meaning other than as a surname, i.e., an “ordinary language” meaning.

4.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Whether the term has the structure and pronunciation of a surname.

The TTAB viewed WEALE as a rare surname, with less than 150 relevant references adduced by the USPTO examining attorney. That, however, only weighed “somewhat in Applicant’s favor” and did “not end the inquiry” because the issue under Section 2(e)(4) is “whether the public would perceive the surname significance as the proposed mark’s primary significance, not whether the surname is rarely encountered” [citation omitted], and the “amount or kind of evidence necessary to demonstrate” that the public will not perceive a mark as a surname “will vary on a case-by-case basis.” &nbsp;Weale, at 9.

The TTAB found for the applicant on the second factor, as no one connected with it had the mark as a surname and no evidence to the contrary was on record.

Turning to the factor concerning any recognized meaning of the mark, the applicant argued “weal” is the phonetic equivalent of its mark and had “a recognized meaning of ‘happy or prosperous state that is aligned” with its “branding”. This was not persuasive because the applicant did not adduce any evidence showing such a meaning “was readily recognized by the average consumer,” and the applicant’s reliance on a dictionary definition was “not enough” to prevail on this factor. Id. at 10.

For the fourth factor of structure and pronunciation of a surname, the TTAB referred to prior cases where a rare surname looked like a surname, such as PIRELLI, and where one did not, such as KODAK, and acknowledged that the determination of this factor “is a subjective one.”&nbsp; Id. at 10. Notably, the examining attorney did not contest the applicant’s contention that the mark did not have the structure and sound of a surname. Nevertheless, the TTAB decided “WEALE sounds like a surname with the structure or format of a surname.” Id. at 11.

The takeaway: If you are seeking registration of a rare surname, consider the Benthin factors beforehand; and if you will rely on a dictionary definition, be sure it is a commonly understood term so that the mark’s primary significance will not be a surname.

Surname Refusals – Rarity Alone Will Not Defeat a Refusal To Register

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