Surname preceded by initials sufficient to suggest personal name

United States of America
In In re PJ Fitzpatrick Inc (Case 77256618, June 11 2010), the Trademark Trial and Appeal Board (TTAB) has clarified earlier surname decisions by holding that a surname preceded by two initials should be sufficient to suggest a personal name, and should not be barred from registration as being simply a surname.
 
Under Section 2(e)(4) of the Lanham Act, a name may be registered as a trademark provided that it is not “primarily merely” a surname. The examining attorney refused to register the mark PJ FITZPATRICK INC for various construction services in Class 37 of the Nice Classification on the grounds that the mark was primarily merely a surname.  
 
On appeal, the TTAB indicated that “there is no doubt that 'Fitzpatrick' alone is primarily merely a surname. There is also no doubt that PJ FITZPATRICK INC is clearly more than just a surname”. The issue was at what point the mark ascended from the plane of certain Section 2(e)(4) refusal to the plane of acceptability.
 
The TTAB emphasized that Section 2(e)(4) does not enable rejection of all surname marks but, more precisely, of marks that are “primarily merely” surnames. Finding no issue with whether 'Fitzpatrick' is a surname, and determining that 'Inc' was immaterial to the issue, the TTAB focused on the two-letter leading initials as far more “significant” to the issue.
 
The decision stressed that many famous people, such as PT Barnum, JC Penney and OJ Simpson, use two-letter leading initials in place of given names. Moreover, not only famous people, but a “segment of American society”, utilizes such initials. Furthermore, the initials need not even be capitalized to qualify (eg, ee cummings). The use of initials to stand in the place of a given first name is critical because it expands a surname into a full “personal” name, which cannot be refused under Section 2(e)(4) and is registrable on the Principal Register without a showing of secondary meaning, provided that it otherwise qualifies.
 
While the TTAB’s decision in the present case is precedential, it is not novel. The court in In re I Lewis Cigar Mfg Co (98 USPQ 264 (CCPA 1953)) suggested over 50 years ago that a combination of two initials and a surname creates a full name and, therefore, a registrable mark. In case there were any lingering doubts, the TTAB in the present case stated unequivocally that “[i]f a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily merely a surname”. The TTAB even hinted that one initial might be sufficient to create a personal name, although there is no per se rule and it ultimately “depends on the principal or ordinary significance of the term, and that is a question of fact based on the facts made of record”.
 
Dennis S Prahl, Ladas & Parry LLP, New York

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