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Archived updates for Wednesday, October 24, 2007

"J.J. YELEY" Not Primarily Merely a Surname

Thanks to the TTABlog for pointing out In re Yeley, Serial No. 78489186 (October 17, 2007), where the U.S. Trademark Trial and Appeal Board reversed a refusal to register the mark "J. J. YELEY" (for various goods in 12 classes, ranging from baby bottles to vehicle floor mats) as not being “primarily merely a surname” after all.

According to the decision by Administrative Trademark Judge Bergsman:

The statute provides that registration should be refused if the proposed mark is “primarily merely a surname.” “Merely” is synonymous with “only,” and “primarily” refers to “first in order” or “fundamentally.” Thus, we must determine whether J. J. YELEY is fundamentally only a surname.

. . . [Although t]he Examining Attorney submitted the results from a nationwide LexisNexis phone directory with 147 “Yeley” listings, and the first ten listings (from what appears to be 178 total listings) for “Yeley” from the website . . . the frequency with which YELEY is used as a surname is not rare in this ase.

. . . It is common knowledge that stock car racing has become one of the most popular spectator sports in the United States and that as such, many of its participating drivers have become well-known personalities to fans. Thus, based on applicant’s declaration, we are convinced that the primary significance of J. J. YELEY is the race car driver [Christopher Beltram Hernandez Yeley], and this primary significance outweighs the surname significance. In other words, applicant’s initials, “J. J.” do not reinforce the surname “Yeley”; rather, the mark in its entirety conveys the impression that it is a personal name.

. . . Lastly, we consider whether J. J. YELEY has the “look and sound” of a surname. As to this factor, the Examining Attorney argues that “consumers are accustomed to seeing and hearing the term YELEY in the context of a surname. Thus, the term YELEY has the ‘look and sound’ of a surname simply because consumers are accustomed to seeing and hearing this term as a surname and it is the surname of the applicant.”

This is a decidedly subjective factor based on whether prospective consumers would perceive J. J. YELEY to be a personal name or a surname. A surname is a “family name” as opposed to a given name.10 The fact that the designation at issue is a combination of applicant’s initials and surname (which he claims constitute his personal name) tends to show that consumers would perceive J. J. YELEY as indicating a personal name, not primarily merely a surname. See Michael S. Sachs Inc. v. Cordon Art B.V., supra (“The mark M.C. ESCHER would no more be perceived as primarily merely a surname than the personal names P.T. Barnum, T.S.
Eliot, O.J. Simpson, I.M. Pei and Y.A. Tittle”). In this regard, we note that a segment of American society uses euphonic or pleasant-sounding initials rather than given names. Examples include: e. e. cummings, H. L. Mencken, W. C. Fields, P. T. Barnum, H. R. Haldeman, H. L. Hunt, J. P. Morgan, J. C. Penney, J. D. Salinger, E. G. Marshall, K. D. Lang, C. C. Sabathia, and P. J. Carlesimo.

In sum, based on the record in this case, we find that “Yeley” is a rare surname and that the designation at issue, J. J. YELEY, has significance as the race car driver and has the “look and sound” of a personal name, not a surname. Accordingly, we conclude that J. J. YELEY is not primarily merely a surname. Furthermore, as noted above, we must resolve any doubt in favor of applicant. In re Benthin Management GmbH, supra.

In reaching this decision we are mindful of the decision of the predecessor to our primary reviewing court that the use of a first name initial followed by a surname reinforces, rather than diminishes, the surname significance of a term. In re I. Lewis Cigar Mfg. Co., supra (S. SEIDENBERG & CO.’S is primarily merely a surname). See also, In re Sears, Roebuck & Co., 87 USPQ 400 (Comr. Pats. 1950), aff’d, 204 F.2d 32, 96 USPQ 360 (CA DC 1953) (J.C. HIGGINS is primarily merely a surname). These decisions are based on the premise that if the surname is unduly emphasized or otherwise constitutes the only significant part of the mark, the addition of initials will not change the character of the mark as being primarily merely a surname. In re Sears, Roebuck & Co., 96 UPSQ at 362. See also Ex parte Dallioux, 83 USPQ 262, 263 (Comr. Pats. 1949) (ANDRE DALLIOUX would not be registrable if the surname were unduly emphasized or otherwise constituted the only significant part of the mark)

[FOOTNOTE 12 The Commissioner specifically noted that the prohibition against registering the name of an individual is no longer the law. 96 USPQ at 263.]

In Sears, Roebuck, the district court found that the mark J C HIGGINS “has as its foundation only the surname HIGGINS” (which the court found was not a rare surname) and it is “clearly dominated thereby.” In re Sears, Roebuck & Co., 96 USPQ at 361. The finding of fact was that the primary significance of the mark was as a surname.13 In Lewis Cigar Mfg., the CCPA held that under the facts presented therein, the addition of a single initial to the SEIDENBERG surname was not sufficient to remove the mark from surname status. In re I. Lewis Cigar Mfg. Co., 98 USPQ 267. In neither case was there any discussion of evidence indicating that the names J C Higgins or S. Seidenberg identified any particular individuals and, therefore, under the facts of those cases, the addition of initials to a surname served only to reinforce the surname significance of the marks at issue.

However, there is no per se rule that the addition of an initial(s) to a surname means that the mark is automatically primarily merely a surname. It depends on the principal or ordinary significance of the term, and that is a question of fact.

. . . In this application, the record convinces us that the primary significance of J. J. YELEY is a personal name and the identity of the race car driver.

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