TTAB socks it to skier's surname application
The US Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (TTAB) has refused an application by Norwegian Olympic cross-country skiing champion Vegard Ulvang to register his last name as a trademark in connection with socks.
The USPTO examiner refused registration on the grounds that the mark was "primarily merely a surname", notwithstanding Ulvang's contention that his surname (i) is particularly rare, and (ii) does not give the overall impression of being a surname when used in connection with socks.
The TTAB affirmed, finding that the examiner had met her burden of proving primary surname significance on the basis of (i) 15 residential listings for persons with the surname Ulvang in a nationwide telephone database, and (ii) several hundred excerpted articles from the Nexis database referring to persons with that name (some of which referred to Ulvang himself).
The TTAB was unmoved by Ulvang's argument that out of millions of entries in the telephone database, there were only 15 listings for the Ulvang surname. Rather, although the number seemed small, the TTAB presumed that almost any surname would constitute a minute fraction of the database. Moreover, since all but two of the Nexis excerpts submitted by the examiner referred to people with the surname Ulvang, and the residential telephone listings appeared to be scattered across the United States, the TTAB agreed with the examiner that, rare as the name might be, Ulvang would be recognized as a surname by "a substantial number of members of the general public". The TTAB also considered and concluded, without explanation, that the word had the subjective "look and sound" of a surname.
The TTAB's determination was reinforced by Ulvang's admission that the term is his surname, and had no other meaning:
- in the dictionary;
- in a foreign language; or
- as a geographical designation.
Based on the evidence and these concessions, registration was refused.
The ruling is consistent with prior cases wherein the TTAB affirmed refusals of registration for marks held to be primarily merely a surname on the basis of evidence at least as sparse (see for instance In re Pohang Iron & Steel Co (230 USPQ 93 (TTAB 1984)), In re Petrin Corp (231 USPQ 902 (TTAB 1986)) and In re Industrie Pirelli Societa per Azioni (9 USPQ2d 1564 (TTAB 1988)).
Given the seemingly minimal threshold the TTAB has set for justifying a refusal on 'primarily merely a surname' grounds, it would seem prudent for any applicant whose proposed mark may be susceptible to a refusal on such grounds to allege, where possible, a Section 2(f) claim (ie, acquired distinctiveness) in support of registration. One commentator has noted that such a claim "must always be submitted on the record to register such a surname as a mark" (McCarthy on Trademarks and Unfair Competition § 13:28 (4th ed)). The TTAB's opinion in Ulvang observed that the applicant had not alleged a Section 2(f) claim, although it did not speculate on whether such a claim would have affected the ultimate outcome.
Timothy J Kelly and Tila M Duhaime, Fitzpatrick Cella Harper & Scinto, New York
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