Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:	Merillat Industries, Inc.	:	BEFORE THE
Trademark:	BENTLEY	:	TRADEMARK TRIAL
Serial No:	76/357504	:	AND
Attorney:	Edgar A. Zarins, Esq.	:	APPEAL BOARD
Address:	Masco Corporation 21001 Van Born Rd. Taylor, Michigan  48180	:	ON APPEAL

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

The applicant has appealed the Trademark Examining Attorney’s refusal to register the mark BENTLEY for “cabinetry, namely, kitchen and bathroom cabinets and cabinet doors.”  Registration was refused on the Principal Register under Trademark Act 2(e)(4) of the Trademark Act, 15 U.S.C. 1052(e)(4) on the ground that the mark is primarily merely a surname.

 

PROCEDURAL HISTORY

On January 11, 2002, the applicant, Merillat Industries, Inc., applied to register the mark BENTLEY on the Principal Register for goods identified as “cabinetry, namely, kitchen and bathroom cabinets and cabinet doors.”  The application was filed as an intent to use application, under §1(b).  In an Office Action dated March 26, 2002, the examining attorney refused registration of the mark under Trademark Act 2(e)(4) because the mark is primarily merely a surname.   The applicant responded with argument in favor of registration, and the examining attorney made the refusal final in a Final Office Action dated October 10, 2002.  On April 3, 2003, the applicant filed a Notice of Appeal. 

 

 

ARGUMENT

A mark that is primarily merely a surname is not registrable on the Principal Register.    Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §1211.  The Trademark Act, in §2(e)(4), reflects the common law that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use that changes its significance to the public from that of a surname to that of a mark for particular goods or services.  The common law also recognizes that surnames are shared by more than one individual, each of whom may have an interest in using his surname in business; and, by the requirement for evidence of distinctiveness, the law, in effect, delays appropriation of exclusive rights in the name.  In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985) ; TMEP §1211.  The question of whether a mark is primarily merely a surname depends on the mark’s primary significance to the purchasing public.  In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975); See, e.g., Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pats. 1955).  Each case must be decided on its own facts, based upon the evidence in the record.

The question of whether a term is primarily merely a surname depends on the primary, not the secondary, significance to the purchasing public.  The Trademark Trial and Appeal Board has identified five factors to be considered in making this determination: 

(1) whether the surname is rare;

(2) whether the term is the surname of anyone connected with the applicant;

(3) whether the term has any recognized meaning other than as a surname;

(4) whether it has the “look and feel” of a surname; and

(5) whether the stylization of lettering is distinctive enough to create a separate commercial impression. 

 

In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995); TMEP §  1211.01. 

 

            The applicant argues in its brief that the mark’s primary significance to consumers is as an identifier of the goods and that the mark “does not immediately involve the connotation of a surname to the consuming public.”  See Applicant’s Brief at 2.  (hereinafter “Brief”).  The applicant contends that the mark does not have “the look and feel of a surname.”  “Consumers would consider the mark nothing more than a fanciful identifier for applicant’s cabinet collection.”  See Brief at 2. 

            As the evidence of record clearly demonstrates, the primary commercial impression of the applicant’s proposed mark is that of a surname.  The term BENTLEY has no recognized meaning other than as a surname.   It has the “look and feel” of a surname.  The typed form drawing,

devoid of any stylization, does not create any separate commercial impression. 

Common Surname, Not Rare

            The rarity of a surname is a factor to be considered in determining whether a term is primarily merely a surname.  TMEP §1211.01(a)(v).  In this case, the proposed mark is not a rare surname.  PowerFinder® found 16,067 listings for the surname BENTLEY.  See attachments to Office Action dated March 26, 2002.  Further, the Lexis-Nexis® article excerpts attached to the Final Office Action demonstrate that BENTLEY is not a rare surname.  See attachments to Final Office Action dated October 10, 2002. (hereinafter “Final”).       

No Non-Surname Significance

Often a word will have a meaning or significance in addition to its significance as a surname.  If there is a readily recognized meaning of a term, apart from its surname significance, the primary significance is not that of a surname.  TMEP §§1211.01(a), 1211.01(a)(i).  In this case, the term BENTLEY has no such other meaning.  As demonstrated by the pages from the Merriam-Webster’s Collegiate Dictionary attached to the final office action, the word BENTLEY does not appear in the English language dictionary.  See attachments to Final.  The proposed mark has no known geographical significance nor does it refer to any historical place or person.

“Look and Feel” of a Surname

 

            The proposed mark has the “look and feel” of a surname.  The telephone listings and the Lexis-Nexis® article excerpts further support this contention.  The following are a few examples of the article excerpts:

Matt Bentley, a 19 year old from Visalia, has used the Internet to find shoes and paid a pretty penny doing so.  …[B]entley paid $200 for one pair, and $150 and $100 fro the others.  (The Fresno Bee, October 8, 2002, story 11).

 

Former Rep. Helen Delich Bentley and Baltimore County Executive C.O. “Dutch” Ruppersbeger are vying to replace Ehrlich.  Bentley, 78, held the seat for 10 years before Ehrlich was elected in 1994, and the GOP field was effectively cleared….  …[T]he latest independent poll done for The Baltimore Sun and Gazette newspapers showed Bentley slightly ahead, 42 percent to 40 percent.  (Roll Call, October 7, 2002, story 23).

 

Mark S. Bentley has joined the law firm of GrayHarris, Tampa, as a shareholder.  Bentley was a shareholder at the law firm of Mechanik, Nuccio, Bentley , Williams, Hearne & Wester, Tampa.  (St. Petersburg Times, October 7, 2002, story 27).

 

Julie Bentley, spokeswoman for Saks in Birmingham, did not deny that the company was considering closing all three.  …‘[W]e’re working with (CBL) to determine what our plans are,’ Bentley said.  (Milwaukee Journal Sentinel, October 6, 2002, story 43).

 

‘He’s running harder than ever and he’s making good cuts and running through people,’ said Browns rookie linebacker Kevin Bentley.  (The Plain Dealer, October 6, 2002, story 53).

 

David Bentley of Lewisville, Pas., galloped Santo Pronto to a hurdle victory in 3 minutes 49.8 seconds at the Fairfax Races at Belmont Plantation on Sept. 21.  (Washington Post, October 6, 2002, story 61).

 

The truck driver, Chester James Bentley of Dollar Transportation Inc., was unhurt, and no citation was issued, state police said.  (The Arkansas Democrat-Gazette, October 4, 2002, story 84).  

 

See attachments to Final.   The applicant’s proposed mark clearly has the “look and feel”

of a surname.  TMEP §1211.01(a)(vi).

No Stylization

            A mark comprised of a word that, standing by itself, would be considered primarily merely a surname, but which is coupled with a distinctive stylization or design element, is not considered primarily merely a surname.  TMEP §1211.01(b)(iii).  The proposed mark is in typed form.  It contains no stylization or design elements which might create a separate and distinct commercial impression.  Rather, the only commercial impression is that of the word BENTLEY which is primarily merely a surname.

CONCLUSION

            As the evidence of record supports, the proposed mark BENTLEY is primarily merely a surname.  The term has no meaning or significance other than that of a surname.  It has the “look and feel” of a surname and it is not rare.  Finally, the typed form drawing of the mark does not create any distinct commercial impression.  For the foregoing reasons, it is respectfully submitted that the refusal to register under Trademark Act § 2(e)(4) should be affirmed.

                                                                                                                                                                                                                        Respectfully Submitted,

 

 

 

July 15, 2003                                                                        ______________________________

                                                                        Wendy B. Goodman, Examining Attorney

                                                                        Law Office 103    (703) 308-9103 ext. 409

 

                                                                        Michael Hamilton, Managing Attorney

                                                                        Law Office 103    (703) 308-9103 ext. 103