| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88532901 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88532901/mark.png |
| LITERAL ELEMENT | PICKERELL |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| OWNER SECTION (current) | |
| NAME | Buffalo Bayou Distilleries, LLC |
| STREET | 5610 Clinton Drive, Building B |
| CITY | Houston |
| STATE | Texas |
| ZIP/POSTAL CODE | 77020 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| OWNER SECTION (proposed) | |
| NAME | Buffalo Bayou Distilleries, LLC |
| STREET | 5610 Clinton Drive, Building B |
| CITY | Houston |
| STATE | Texas |
| ZIP/POSTAL CODE | 77020 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| jegbert@emsip.com | |
| ARGUMENT(S) | |
| The Examining Attorney has initially refused the mark "PICKERELL" on the Principal Register , because the Examiner has
concluded that the term "PICKERELL" is primarily merely a surname. As discussed below, Applicant believes not only that the U.S. Patent and Trademark Office fail to meet its burden of showing by
clear evidence that the Applicant's mark is primarily merely a surname, but that Applicant's mark is, in fact, not primarily merely a surname. At this time, Applicant respectfully requests
that the Examiner allow the present application to pass to publication in light of the arguments contained in this response to the Office Action.
I. THE MARK IS NOT PRIMARILY MERELY A SURNAME Applicant believes that the U.S. Patent and Trademark Office has failed to meet its burden of showing by clear evidence that the Applicant's mark is primarily merely a surname, and that Applicant's mark is, in fact, not primarily merely a surname. Applicant notes that, in the final analysis, if it is a close call as to whether a mark would be perceived as primarily merely a surname, the Office will resolve doubts in favor of the applicant and pass the mark to publication with the knowledge that others who have the same surname and use it or wish to use it for the same or similar goods or services can file a notice of opposition. In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995) ("Moreover, on the question of whether a mark would be perceived as primarily merely a surname, we are inclined to resolve doubts in favor of the applicant and pass the mark to publication with the knowledge that others who have the same surname and use it or wish to use it for the same or similar goods or services can file a notice of opposition."). The Examiner has refused Applicant's "PICKERELL" mark based only on evidence showing that the term "PICKERELL" has a "surname significance." This is not the test, however. As shown below, Applicant's mark has recognized meanings that are completely unrelated to any alleged "surname significance." It is well settled that a term is primarily merely a surname if, when applied to a particular product (or used in connection with a particular service), its primary significance to the purchasing public is that of a surname. See In re Kahan & Weisz Jewelry Mfg. Corp., 184 USPQ 421 (CCPA 1975). The burden is on the Patent and Trademark Office to establish a prima facie case that the involved term is primarily merely a surname. See id.; see In re BDH Two Inc., 26 USPQ2d 1556 (TTAB 1993); see In re Joint-Stock Company "Baik", 84 USPQ2d (BNA) 1921 (TTAB 2007). Further, the question of whether the term sought to be registered is primarily merely a surname can be resolved only on a case by case basis. See In re Joint-Stock Company "Baik", 84 USPQ2d (BNA) 1921 (TTAB 2007); see In re Establissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); see generally, 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §§13:29 and 13:30 (4th ed. 1999). A. The Elements of Determining Surname Significance. Among the factors to be considered in determining whether a term is primarily merely a surname are the following: (i) whether the surname is rare; (ii) whether anyone connected with applicant has the involved term as a surname; (iii) whether the term has any other recognized meaning; and (iv) whether the term has the "look and feel" of a surname. See In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995); In re Gregory, 70 USPQ2d 1792 (TTAB 2004). B. The Surname "PICKERELL" Is Extremely Rare. Among the most important factors to be considered in determining whether a term is primarily merely a surname would be whether the surname is rare. See In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995); In re Gregory, 70 USPQ2d 1792 (TTAB 2004). The Examiner in this proceeding has submitted absolutely no evidence showing that the term "PICKERELL" is a common surname in the U.S. The Examiner merely posits that the LEXISNEXIS surname database contains five hundred five instances in which the term "PICKERELL" appears as a surname. It is not clear whether those are five hundred five unique instances or if duplicate results are contained therein. Therefore, in a country composed of nearly 320 million people, the Examiner merely postulates that the LEXISNEXIS surname database contains five hundred five references to "PICKERELL" as a surname, which does little to inspire confidence that the term would be perceived primarily as a surname by the purchasing public. This lack of evidence does not rise to the requisite level required to demonstrate that the name "PICKERELL" "appears routinely in news reports, articles and other media as to be broadly exposed to the general public," as required by the law. See In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004); see TMEP §1211.01(a)(v). The burden of proof is on the Examiner to determine, on the unique facts of this case, whether the American public would perceive the "PICKERELL" mark as "primarily merely a surname." In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985). The surname "PICKERELL" is an extremely rare surname in the United States, and as elucidated above, the Examiner has not provided any compelling evidence to suggest otherwise. The 2010 U.S. Census report of names appearing more than 100 times espouses that the surname "PICKERELL" belongs to merely 418 U.S. citizens. See [Exhibit A, 2010 Census Results for the surname "PICKERELL"]. For this reason alone, the term should be considered a rare surname that will not be perceived as such by the general public. See In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995) ("In considering the approximately 100 'Benthin' listings found in the PHONEDISC U.S.A. database, we have recognized the massive scope of this database. Indeed, this database demonstrates the rarity of the surname 'Benthin' by showing that there is but one 'Benthin' for every 750,000 listings. In other words, the surname 'Benthin' is, if not one in a million, one in three quarters of a million."); see In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987) ("Here, since it appears that the directory and NEXIS evidence shows 'Garan' to be an extremely rare surname, we conclude that the directory and NEXIS evidence only slightly supports the Office's position that GARAN is primarily merely a surname."); see In re Sava Research Corp., 32 U.S.P.Q.2d 1380, 1381 (TTAB 1994) ("At first blush, the material from the PHONEDISC U.S.A. database (1992 ed.) showing that at least 100 different Savas live throughout the United States would indicate that Sava is not an extremely rare surname. However, it must be remembered that this database includes more than 90,000,000 listings. Thus, the uses of Sava as a surname represent about only one ten-thousandth of one percent of the surnames in this database."). More recently, the Board relied on the fact that only 456 examples of the "Baik" surname were located from a comprehensive directory of the entire United States to help come to the conclusion that the term "Baik" was not primarily merely a surname. In re Joint-Stock Company "Baik", 84 USPQ2d (BNA) 1921 (TTAB 2007). Similarly, the Board also recently reversed the Examining Attorney's refusal to register the mark "BOLAN" based upon a "finding of the degree of the surname's rareness on the 455 listings for the name 'BOLAN' from the LexisNexis data base." In re Grand & Piano Parts Distribution B.V., Serial No. 85946217 (TTAB March 31, 2015). In Judge Seeherman's discussion of extremely rare surnames, she explains that "there are very few, if any, people who can possibly be affected by the registration of that surname." In re Curlin Medical Inc., Serial No. 78560314, (TTAB, February 11, 2008) (concurring opinion). As for the surname "CURLIN", the PTO found only 286 records in a national database, a number that Judge Seeherman considered "so small that the purpose of the statute prohibiting the registration of marks which are primarily merely a surname would not be served by refusing registration in this case." Id. The Board recently agreed with Judge Seeherman's view that "rareness" is the most important factor in the surname analysis. The Board explained that "we believe it is important to accord the proper weight to the 'rareness' of the surname factor while keeping in mind the purpose of Section 2(e)(4) of the Act. As explained by Judge Seeherman in her concurrence in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 at 1924 (TTAB 2007), the 'purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames,... Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses...'" In re Hall Wines, LLC, Serial No. 78926151 (February 10, 2009). The Board has clearly decided in its recent decisions that Judge Seeherman's analysis on rareness of a surname is correct. Quite simply, if there are not many people with the surname in question, then it is less likely that any person will be affected by registration of such a surname as a trademark. See id. There is no doubt that "PICKERELL" would be considered by the TTAB to be an "extremely rare surname." See In re Joint-Stock Company "Baik", 84 USPQ2d (BNA) 1921 (TTAB 2007) (relying on the fact that only 456 examples of the "Baik" surname were located from a comprehensive directory of the United States). As such, a refusal of Applicant's "PICKERELL" mark under Section 2(e)(4) is improper and Applicant's application should be allowed to register in due course. C. The Mark "PICKERELL" is Not the Surname of Anyone Connected with the Applicant. In the mark at issue, the term "PICKERELL" is not derived from a surname connected with the Applicant. Thus, the Applicant's mark is not primarily merely a surname. The Examiner has attached evidence showing that the term "PICKERELL" is a surname. Applicant concedes that the term "PICKERELL" can be a surname. But, Applicant's mark, is not primarily merely a surname. Applicant confirms no person connected with the Applicant's business has the surname "PICKERELL." As discussed below, the term "PICKERELL" has a number of other readily identifiable meanings. D. The Term "PICKERELL" Has Readily Identifiable Meanings. It is well settled that words having significance other than as a surname are not "primarily merely a surname." Fisher Radio Corp. v. Bird Electronic Corp., 162 USPQ 265 (TTAB 1969) (BIRD is not primarily merely a surname); Ex parte Omaha Cold Storage Co., 111 USPQ 189 (Comm'r Pat. 1956) (DOUGLAS is not primarily merely a surname); In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989) (CALLISTO has no surname meaning from Greek mythology); In re BDH, Inc., 26 USPQ2d 1556 (TTAB 1993) (GRAINGERS for crackers and chips is not a surname because it would be perceived as suggestive of the grain-based nature of the product); see also TMEP §1211.01(a). If there is a readily recognized meaning of a term, apart from its surname significance, such that the primary significance of the term is not that of a surname, registration should be granted on the Principal Register without evidence of acquired distinctiveness. See In re United Distillers PLC, 56 USPQ2d 1220 (TTAB 2000) (the relatively rare surname HACKLER held not primarily merely a surname, in light of dictionary meaning); In re Hunt Electronics Co., 155 USPQ 606 (TTAB 1967) (HUNT held not primarily merely a surname despite surname significance). 1. The Applicant's Mark Has Various Meanings Applicant's mark "PICKERELL" is an extremely rare word that consumers are not used to encountering. However, consumers would much more commonly expect to encounter the word "PICKEREL". See [Exhibit B, Wikipedia Article explaining meanings of the term "PICKEREL"]. As a result, it is likely that consumers encountering Applicant's mark will simply view it as a misspelling of the word "PICKEREL" that they are used to seeing. Thus, consumers will likely associated a meaning of "pickerel" fish with Applicant's mark. See id. It is also possible that consumers may associated certain places with Applicant's mark, including Pickerel Creek, Missouri / the Pickerel River / Pickerel, Viriginia / Pickerel, Wisconsin." See id. Therefore, consumers would much more readily recognize and associate one of these alternative meanings of the term "PICKEREL" than they would associate a meaning connected to a very rare surname. 2. The Term "PICKERELL" is Primarily the Name of a Famous Person A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person. See Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 331, 165 USPQ 459, 461 (S.D.N.Y. 1970) (DA VINCI); In re Pyro-Spectaculars Inc., 63 USPQ2d 2022, 2024 (TTAB 2002) (SOUSA); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) ("M.C. ESCHER names a specific individual of considerable renown, and [we] are persuaded that the mark 'M.C. ESCHER' is not primarily merely a surname"). Cf., for example, In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551-52 (TTAB 2017) ("[A]lthough John and Jim Belushi are widely known to Americans, the evidence does not show that they qualify as historical figures closely associated with Applicant's services"). The term "PICKERELL" would most likely be associated with David Steven Pickerell . David Pickerell was a well known American distiller. "He was considered the 'Johnny Appleseed' or 'founding father' of craft distilling." See [September 10, 2019 Office Action, pages 8-12]. Throughout his tenure at Maker's Mark, he contributed greatly to the growth and prestige of the brand. See id. E. The Term "PICKERELL" Does Not Have the "Look and Feel" of a Surname. Applicant also believes that the term "PICKERELL" does not have the "look and feel" of a surname. The "look and feel " factor is subjective and would look to whether "PICKERELL" has the "structure and pronunciation" or "the look and sound" of a surname. See In re Benthin Management GmbH, supra at 1333; see In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994); In re Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988). As espoused by In re Industrie Pirelli, "certain rare surnames look like surnames, and certain rare surnames do not and that 'Pirelli' falls into the former category, while 'Kodak' falls into the latter." Id. The burden of proof is on the Examiner to establish that Applicant's mark has the look and feel of a surname. The evidence submitted by the Examiner merely demonstrates that the term "PICKERELL" can be a surname. However, the record is wholly devoid of any evidence or explanation whatsoever to support a finding that "PICKERELL" has the "look and sound" of a surname. Applicant believes that the term "PICKERELL" instead has the look, feel, and pronunciation of the term "young," which is the precise meaning of Applicant's mark. The evidence submitted by the Applicant supports this interpretation. Finally, Applicant notes that the term "PICKERELL" does not have the visual appearance or spoken sound of a surname. Applicant submits that the proposed mark does not follow the pattern of any common type of surname, e.g., -son, -ter, -elli, -vitch, - ez, and, thus, does not look or sound like a surname. See In re Gregory, 70 USPQ2d at 1796 (discussing the types of terms that would not be perceived as surnames). II. CONCLUSION In conclusion, it is important to note that "the purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames, as though there were something offensive in viewing a surname. Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses." In re Joint-Stock Company "Baik", 84 USPQ2d (BNA) 1921 (TTAB 2007) (concurring opinion). The record is wholly devoid of evidence indicating that the term "PICKERELL" is primarily merely a surname. Applicant notes that no similar registered or pending mark which would bar registration under the Trademark Act was found by the Examiner and, as such, Applicant respectfully requests that the present mark be passed to publication at an early date. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_5078217165-20200309134402924812_._Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT18\IMAGEOUT18\885\329\88532901\xml1\ROA0002.JPG |
| \\TICRS\EXPORT18\IMAGEOUT18\885\329\88532901\xml1\ROA0003.JPG | |
| ORIGINAL PDF FILE | evi_5078217165-20200309134402924812_._Exhibit_B.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\885\329\88532901\xml1\ROA0004.JPG |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A, 2010 Census Results for the surname "PICKERELL"; Exhibit B, Wikipedia Article explaining meanings of the term "PICKEREL" |
| ATTORNEY INFORMATION (current) | |
| NAME | John S. Egbert |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | EGBERT, MCDANIEL & SWARTZ, PLLC |
| STREET | 1001 TEXAS AVE., SUITE 1250 |
| CITY | HOUSTON |
| STATE | Texas |
| POSTAL CODE | 77002 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 713-224-8080 |
| FAX | 713-223-4873 |
| mail@emsip.com | |
| DOCKET/REFERENCE NUMBER | 2984-80 |
| ATTORNEY INFORMATION (proposed) | |
| NAME | John S. Egbert |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | EGBERT, MCDANIEL & SWARTZ, PLLC |
| STREET | 1001 TEXAS AVE., SUITE 1250 |
| CITY | HOUSTON |
| STATE | Texas |
| POSTAL CODE | 77002 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 713-224-8080 |
| FAX | 713-223-4873 |
| mail@emsip.com | |
| DOCKET/REFERENCE NUMBER | 2984-80 |
| OTHER APPOINTED ATTORNEY | Michael F. Swartz, Kevin S. Wilson |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | JOHN S. EGBERT |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | mail@emsip.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | USPTO@dockettrak.com |
| DOCKET/REFERENCE NUMBER | 2984-80 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | John S. Egbert |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | mail@emsip.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 2984-80 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /2984-80/ |
| SIGNATORY'S NAME | Michael F. Swartz |
| SIGNATORY'S POSITION | Attorney of record, Texas bar member |
| SIGNATORY'S PHONE NUMBER | 713-224-8080 |
| DATE SIGNED | 03/09/2020 |
| RESPONSE SIGNATURE | /2984-80/ |
| SIGNATORY'S NAME | Michael F. Swartz |
| SIGNATORY'S POSITION | Attorney of record, Texas bar member |
| SIGNATORY'S PHONE NUMBER | 713-224-8080 |
| DATE SIGNED | 03/09/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Mar 09 13:50:56 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0200309135056770745-88532 901-710b94d4ab2ad7936cc79 5444a9cd3d65534172c5e773a 14a1d70b7f3883722-N/A-N/A -20200309134402924812 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
I. THE MARK IS NOT PRIMARILY MERELY A SURNAME
Applicant believes that the U.S. Patent and Trademark Office has failed to meet its burden of showing by clear evidence that the Applicant's mark is primarily merely a surname, and that Applicant's mark is, in fact, not primarily merely a surname. Applicant notes that, in the final analysis, if it is a close call as to whether a mark would be perceived as primarily merely a surname, the Office will resolve doubts in favor of the applicant and pass the mark to publication with the knowledge that others who have the same surname and use it or wish to use it for the same or similar goods or services can file a notice of opposition. In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995) ("Moreover, on the question of whether a mark would be perceived as primarily merely a surname, we are inclined to resolve doubts in favor of the applicant and pass the mark to publication with the knowledge that others who have the same surname and use it or wish to use it for the same or similar goods or services can file a notice of opposition.").
The Examiner has refused Applicant's "PICKERELL" mark based only on evidence showing that the term "PICKERELL" has a "surname significance." This is not the test, however. As shown below, Applicant's mark has recognized meanings that are completely unrelated to any alleged "surname significance." It is well settled that a term is primarily merely a surname if, when applied to a particular product (or used in connection with a particular service), its primary significance to the purchasing public is that of a surname. See In re Kahan & Weisz Jewelry Mfg. Corp., 184 USPQ 421 (CCPA 1975). The burden is on the Patent and Trademark Office to establish a prima facie case that the involved term is primarily merely a surname. See id.; see In re BDH Two Inc., 26 USPQ2d 1556 (TTAB 1993); see In re Joint-Stock Company "Baik", 84 USPQ2d (BNA) 1921 (TTAB 2007). Further, the question of whether the term sought to be registered is primarily merely a surname can be resolved only on a case by case basis. See In re Joint-Stock Company "Baik", 84 USPQ2d (BNA) 1921 (TTAB 2007); see In re Establissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); see generally, 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §§13:29 and 13:30 (4th ed. 1999).
A. The Elements of Determining Surname Significance.
Among the factors to be considered in determining whether a term is primarily merely a surname are the following: (i) whether the surname is rare; (ii) whether anyone connected with applicant has the involved term as a surname; (iii) whether the term has any other recognized meaning; and (iv) whether the term has the "look and feel" of a surname. See In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995); In re Gregory, 70 USPQ2d 1792 (TTAB 2004).
B. The Surname "PICKERELL" Is Extremely Rare.
Among the most important factors to be considered in determining whether a term is primarily merely a surname would be whether the surname is rare. See In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995); In re Gregory, 70 USPQ2d 1792 (TTAB 2004). The Examiner in this proceeding has submitted absolutely no evidence showing that the term "PICKERELL" is a common surname in the U.S. The Examiner merely posits that the LEXISNEXIS surname database contains five hundred five instances in which the term "PICKERELL" appears as a surname. It is not clear whether those are five hundred five unique instances or if duplicate results are contained therein. Therefore, in a country composed of nearly 320 million people, the Examiner merely postulates that the LEXISNEXIS surname database contains five hundred five references to "PICKERELL" as a surname, which does little to inspire confidence that the term would be perceived primarily as a surname by the purchasing public. This lack of evidence does not rise to the requisite level required to demonstrate that the name "PICKERELL" "appears routinely in news reports, articles and other media as to be broadly exposed to the general public," as required by the law. See In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004); see TMEP §1211.01(a)(v). The burden of proof is on the Examiner to determine, on the unique facts of this case, whether the American public would perceive the "PICKERELL" mark as "primarily merely a surname." In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985).
The surname "PICKERELL" is an extremely rare surname in the United States, and as elucidated above, the Examiner has not provided any compelling evidence to suggest otherwise. The 2010 U.S. Census report of names appearing more than 100 times espouses that the surname "PICKERELL" belongs to merely 418 U.S. citizens. See [Exhibit A, 2010 Census Results for the surname "PICKERELL"]. For this reason alone, the term should be considered a rare surname that will not be perceived as such by the general public. See In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995) ("In considering the approximately 100 'Benthin' listings found in the PHONEDISC U.S.A. database, we have recognized the massive scope of this database. Indeed, this database demonstrates the rarity of the surname 'Benthin' by showing that there is but one 'Benthin' for every 750,000 listings. In other words, the surname 'Benthin' is, if not one in a million, one in three quarters of a million."); see In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987) ("Here, since it appears that the directory and NEXIS evidence shows 'Garan' to be an extremely rare surname, we conclude that the directory and NEXIS evidence only slightly supports the Office's position that GARAN is primarily merely a surname."); see In re Sava Research Corp., 32 U.S.P.Q.2d 1380, 1381 (TTAB 1994) ("At first blush, the material from the PHONEDISC U.S.A. database (1992 ed.) showing that at least 100 different Savas live throughout the United States would indicate that Sava is not an extremely rare surname. However, it must be remembered that this database includes more than 90,000,000 listings. Thus, the uses of Sava as a surname represent about only one ten-thousandth of one percent of the surnames in this database.").
More recently, the Board relied on the fact that only 456 examples of the "Baik" surname were located from a comprehensive directory of the entire United States to help come to the conclusion that the term "Baik" was not primarily merely a surname. In re Joint-Stock Company "Baik", 84 USPQ2d (BNA) 1921 (TTAB 2007). Similarly, the Board also recently reversed the Examining Attorney's refusal to register the mark "BOLAN" based upon a "finding of the degree of the surname's rareness on the 455 listings for the name 'BOLAN' from the LexisNexis data base." In re Grand & Piano Parts Distribution B.V., Serial No. 85946217 (TTAB March 31, 2015). In Judge Seeherman's discussion of extremely rare surnames, she explains that "there are very few, if any, people who can possibly be affected by the registration of that surname." In re Curlin Medical Inc., Serial No. 78560314, (TTAB, February 11, 2008) (concurring opinion). As for the surname "CURLIN", the PTO found only 286 records in a national database, a number that Judge Seeherman considered "so small that the purpose of the statute prohibiting the registration of marks which are primarily merely a surname would not be served by refusing registration in this case." Id.
The Board recently agreed with Judge Seeherman's view that "rareness" is the most important factor in the surname analysis. The Board explained that "we believe it is important to accord the proper weight to the 'rareness' of the surname factor while keeping in mind the purpose of Section 2(e)(4) of the Act. As explained by Judge Seeherman in her concurrence in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 at 1924 (TTAB 2007), the 'purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames,... Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses...'" In re Hall Wines, LLC, Serial No. 78926151 (February 10, 2009). The Board has clearly decided in its recent decisions that Judge Seeherman's analysis on rareness of a surname is correct. Quite simply, if there are not many people with the surname in question, then it is less likely that any person will be affected by registration of such a surname as a trademark. See id.
There is no doubt that "PICKERELL" would be considered by the TTAB to be an "extremely rare surname." See In re Joint-Stock Company "Baik", 84 USPQ2d (BNA) 1921 (TTAB 2007) (relying on the fact that only 456 examples of the "Baik" surname were located from a comprehensive directory of the United States). As such, a refusal of Applicant's "PICKERELL" mark under Section 2(e)(4) is improper and Applicant's application should be allowed to register in due course.
C. The Mark "PICKERELL" is Not the Surname of Anyone Connected with the Applicant.
In the mark at issue, the term "PICKERELL" is not derived from a surname connected with the Applicant. Thus, the Applicant's mark is not primarily merely a surname. The Examiner has attached evidence showing that the term "PICKERELL" is a surname. Applicant concedes that the term "PICKERELL" can be a surname. But, Applicant's mark, is not primarily merely a surname. Applicant confirms no person connected with the Applicant's business has the surname "PICKERELL." As discussed below, the term "PICKERELL" has a number of other readily identifiable meanings.
D. The Term "PICKERELL" Has Readily Identifiable Meanings.
It is well settled that words having significance other than as a surname are not "primarily merely a surname." Fisher Radio Corp. v. Bird Electronic Corp., 162 USPQ 265 (TTAB 1969) (BIRD is not primarily merely a surname); Ex parte Omaha Cold Storage Co., 111 USPQ 189 (Comm'r Pat. 1956) (DOUGLAS is not primarily merely a surname); In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989) (CALLISTO has no surname meaning from Greek mythology); In re BDH, Inc., 26 USPQ2d 1556 (TTAB 1993) (GRAINGERS for crackers and chips is not a surname because it would be perceived as suggestive of the grain-based nature of the product); see also TMEP §1211.01(a). If there is a readily recognized meaning of a term, apart from its surname significance, such that the primary significance of the term is not that of a surname, registration should be granted on the Principal Register without evidence of acquired distinctiveness. See In re United Distillers PLC, 56 USPQ2d 1220 (TTAB 2000) (the relatively rare surname HACKLER held not primarily merely a surname, in light of dictionary meaning); In re Hunt Electronics Co., 155 USPQ 606 (TTAB 1967) (HUNT held not primarily merely a surname despite surname significance).
1. The Applicant's Mark Has Various Meanings
Applicant's mark "PICKERELL" is an extremely rare word that consumers are not used to encountering. However, consumers would much more commonly expect to encounter the word "PICKEREL". See [Exhibit B, Wikipedia Article explaining meanings of the term "PICKEREL"]. As a result, it is likely that consumers encountering Applicant's mark will simply view it as a misspelling of the word "PICKEREL" that they are used to seeing. Thus, consumers will likely associated a meaning of "pickerel" fish with Applicant's mark. See id. It is also possible that consumers may associated certain places with Applicant's mark, including Pickerel Creek, Missouri / the Pickerel River / Pickerel, Viriginia / Pickerel, Wisconsin." See id. Therefore, consumers would much more readily recognize and associate one of these alternative meanings of the term "PICKEREL" than they would associate a meaning connected to a very rare surname.
2. The Term "PICKERELL" is Primarily the Name of a Famous Person
A term with surname significance may not be primarily merely a surname if that term also
identifies a historical place or person. See Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 331, 165 USPQ 459, 461 (S.D.N.Y. 1970) (DA VINCI); In re Pyro-Spectaculars Inc., 63 USPQ2d 2022, 2024 (TTAB 2002) (SOUSA); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000) ("M.C. ESCHER names a specific individual of considerable renown, and [we] are persuaded that the mark 'M.C. ESCHER' is not primarily merely a surname"). Cf., for example, In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551-52 (TTAB 2017) ("[A]lthough John and Jim Belushi are widely known to Americans, the evidence does not show that they qualify as historical figures closely associated with Applicant's services").
The term "PICKERELL" would most likely be associated with David Steven Pickerell . David Pickerell was a well known American distiller. "He was considered the 'Johnny Appleseed' or 'founding father' of craft distilling." See [September 10, 2019 Office Action, pages 8-12]. Throughout his tenure at Maker's Mark, he contributed greatly to the growth and prestige of the brand. See id.
E. The Term "PICKERELL" Does Not Have the "Look and Feel" of a Surname.
Applicant also believes that the term "PICKERELL" does not have the "look and feel" of a surname. The "look and feel " factor is subjective and would look to whether "PICKERELL" has the "structure and pronunciation" or "the look and sound" of a surname. See In re Benthin Management GmbH, supra at 1333; see In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994); In re Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988). As espoused by In re Industrie Pirelli, "certain rare surnames look like surnames, and certain rare surnames do not and that 'Pirelli' falls into the former category, while 'Kodak' falls into the latter." Id. The burden of proof is on the Examiner to establish that Applicant's mark has the look and feel of a surname. The evidence submitted by the Examiner merely demonstrates that the term "PICKERELL" can be a surname. However, the record is wholly devoid of any evidence or explanation whatsoever to support a finding that "PICKERELL" has the "look and sound" of a surname. Applicant believes that the term "PICKERELL" instead has the look, feel, and pronunciation of the term "young," which is the precise meaning of Applicant's mark. The evidence submitted by the Applicant supports this interpretation.
Finally, Applicant notes that the term "PICKERELL" does not have the visual appearance or spoken sound of a surname. Applicant submits that the proposed mark does not follow the pattern of any common type of surname, e.g., -son, -ter, -elli, -vitch, - ez, and, thus, does not look or sound like a surname. See In re Gregory, 70 USPQ2d at 1796 (discussing the types of terms that would not be perceived as surnames).
II. CONCLUSION
In conclusion, it is important to note that "the purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames, as though there were something offensive in viewing a surname. Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses." In re Joint-Stock Company "Baik", 84 USPQ2d (BNA) 1921 (TTAB 2007) (concurring opinion). The record is wholly devoid of evidence indicating that the term "PICKERELL" is primarily merely a surname.
Applicant notes that no similar registered or pending mark which would bar registration under the Trademark Act was found by the Examiner and, as such, Applicant respectfully requests that the present mark be passed to publication at an early date.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
