Gregory

Trademark Trial and Appeal Board

May 12, 2004

No. 76277664 (T.T.A.B. May. 12, 2004)

Hearing: Paper No. 14
February 4, 2004 Mailed:
May 12, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Gregory
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Serial No. 76277664
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Paul J. Vincenti and Stacey T. Kelly of Vincenti &
Vincenti, P.C. for Rogan S. Gregory.
Robert Clark, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Hohein, Holtzman and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Rogan S. Gregory (an individual) has applied to
register ROGAN as a mark for goods identified as
"bracelets, rings, chains and pendants" in International
Class 14, "leather handbags and wallets, fabric handbags"
in International Class 18, and "pants, shirts, footwear" in
International Class 25. The application is based on
applicant's stated use of ROGAN as a mark in commerce since
March 2000, such date being applicable to all classes.
This Opinion Is Citable
as Precedent of the
TTAB
Ser No. 76277664
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The examining attorney has refused registration under
Section 2(e)(4) of the Trademark Act, 15 U.S.C.
§1052(e)(4), on the ground that ROGAN is primarily merely a
surname. The second office action alerted applicant to the
possibility of registering a surname as a mark under
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), or
on the Supplemental Register. Applicant did not attempt to
amend the application, either to seek registration under
Section 2(f) or on the Supplemental Register. When the
refusal of registration was then made final, applicant
appealed. Applicant and the examining attorney filed
briefs. Applicant's counsel and the examining attorney
also appeared at an oral hearing.1 We affirm the refusal of
registration.
As a preliminary matter, we note the examining
attorney's submission, with his brief, of photocopies of
pages from what appear to be certain dictionaries, with an
implicit request that we take judicial notice of these
items. However, neither the photocopied pages nor the
examining attorney's brief specifies the dictionaries from
which the copies were made. Because this made it
1 Examining attorney Jane C. Kang issued the first and second
office actions, which included all evidence introduced by the
Office during examination. Examining attorney Robert Clark
issued the final refusal and brief, and argued the appeal.
Ser No. 76277664
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difficult, if not impossible, for the applicant to discern
the source of these materials, we deny the examining
attorney's request that we take judicial notice.
The examining attorney's contributions to the record
in this case include evidence that a search of a
computerized database of telephone listings by the
examining attorney returned 1,087 residential listings of
individuals with the surname ROGAN (a printout of
approximately 25 percent of the retrieved listings was
included, showing listings throughout the United States);
15 article excerpts from the NEXIS database, each of which
refers to an individual with the surname ROGAN (the
examining attorney's search in the database for ROGAN
reportedly retrieved 19,552 articles including the term); a
printout of the first 10 "hits" or web site links from a
search of the Internet for web pages with the term ROGAN
(utilizing the Google search engine); printouts of
approximately a dozen web pages featuring information on
individuals with the surname ROGAN, and a genealogy web
page (http://genforum.genealogy.com/rogan/) featuring links
to messages posted by numerous individuals regarding the
name ROGAN in their family histories (e.g., "Rogans in
Maine," "Thomas Carr Rogan III from Chicago, was my
father," and "Re: adoption of Caroline Rogan").
Ser No. 76277664
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The applicant's contributions to the record include a
declaration from applicant attesting to the facts that
ROGAN is his first name, not his surname, and that it is
not the surname of anyone connected with the design,
manufacture or production of ROGAN products; a declaration
of applicant's counsel Stacey T. Kelly, used to introduce
searches from the website www.hamrick.com/names.html,
illustrating the geographic distribution of the surnames
ROGAN, HACKLER, KELLY and SMITH in the United States; a web
page showing the results of an "atlas query" that lists
various place names (Rogan in the Ukraine; Rogana in
Tennessee; Rogans Hill in Australia; and Roganville in
Texas); two web pages featuring recipes for an Indian dish
named "rogan josh" (described as "one of the classic Mogul
dishes,"2 it may be prepared with lamb or beef and is
reported to translate as "red meat"); and one web page
featuring a variation on rogan josh listed as "chicken
rogan."
The USPTO has the burden of establishing a prima facie
case that a term is primarily merely a surname. In re
Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652,
2 We take judicial notice of the following: "Mogul, n. 1. one of
the Mongol conquerors of India who established an empire that
lasted from 1526 to 1857. 2. one of their descendants. …" The
Random House College Dictionary 858 (rev. ed. 1982).
Ser No. 76277664
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653 (Fed. Cir. 1985). Moreover, “[t]he question of whether
a word sought to be registered is primarily merely a
surname within the meaning of the statute can only be
resolved on a case by case basis,” taking into account a
number of various factual considerations. Id.
There are five accepted factors to be considered in
the analysis:
(1) Is the word a common or rarely used surname?
(2) Does anyone connected with the applicant have that
surname?
(3) Does the word have meaning other than as a
surname?
(4) Does the word look and sound like a surname?
(5) Is the word presented in use in a stylized form
distinctive enough to create a separate non-surname
impression?
In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-34
(TTAB 1995) (Examining attorney's refusal to register
BENTHIN reversed, because it was a rare surname, did not
look and sound like a surname, and was set forth in a
highly stylized oval design).
In this case, there is no stylization or design
involved; applicant seeks merely to register ROGAN in typed
form. Thus, the fifth factor is not a factor in this case
Ser No. 76277664
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and we examine the record in light of the first four
factors.
As to the first factor, applicant argues that the
existence of nearly 1100 listings of ROGAN in telephone
directories in the United States is evidence that the
surname is rare, because this is a very small percentage of
the asserted 90 million listings covered by the database
drawing these directories together, and because applicant's
searches of the hamrick.com website show that individuals
with the ROGAN surname are scattered in small numbers
around the United States. In addition, applicant argues
that the Board previously has found HACKLER to be a rare
surname despite the presence of a greater number of
listings in the Phonedisc database than were found by the
examining attorney's search for ROGAN in this case (1,295
listings for HACKLER out of what was then approximately 80
million total listings, compared to 1,087 listings for
ROGAN out of what are now reported to be approximately 90
million total listings).3 See In re United Distillers plc,
56 USPQ2d 1220 (TTAB 2000).
3 We accept for the purpose of the comparison, applicant's
contention that the ReferenceUSA database used by the examining
attorney in this case formerly was known as the Phonedisc
database.
Ser No. 76277664
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We do not view the United Distillers decision as
setting a per se benchmark stating that unless there are
many more than 1300 listings in a database of telephone
listings a surname must be found to be a rare. First, we
note that the decision is somewhat equivocal on the
rareness factor, for it initially states that HACKLER "is a
rare surname" but later refers to "this relatively rare
surname" (emphasis added). More importantly, the decision
does not rely solely on the database figures to reach a
conclusion on the rareness factor. The United Distillers
decision also relied on the absence of any significant
number of listings for the HACKLER surname from telephone
directories for certain major metropolitan areas (the
borough of Manhattan in New York City and the Washington,
DC/Northern Virginia areas). United Distillers, 56 USPQ2d
at 1221. Similarly, in the Benthin decision, the
conclusion regarding rareness was based not only on a low
number of database listings (slightly over 100) but also on
the absolute absence of listings from the Boston, Manhattan
and Philadelphia directories. Benthin, 37 USPQ2d at 1333.
We conclude that the question whether a surname is or
is not rare is not to be determined solely by comparing the
number of listings of the name to the total number of
listings in a vast computerized database. Given the large
Ser No. 76277664
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number of different surnames in the United States, even the
most common surnames would represent but small fractions of
such a database. Another issue to be considered, in
assessing how rarely is a name used, is the media attention
or publicity accorded public personalities with the name.
A surname rarely appearing in birth records may nonetheless
appear more routinely in news reports, articles and the
like, so as to be broadly exposed to the general public.
In the case at hand, the record reveals that the (now
former) Director of the United States Patent and Trademark
Office is James Rogan. Moreover, the record reveals that
Mr. Rogan was the majority leader of the California State
Assembly before being elected to represent a U.S. House
district in Southern California; that he received press
attention for his role as an impeachment manager during the
impeachment trial of former President Clinton; and that he
subsequently received additional press attention for his
role as a candidate for re-election in what was reported to
be, at that time, the most expensive race ever for a seat
in the U.S. House of Representatives. In addition, the
record reveals that a Salt Lake City councilman is named
Tom Rogan. We think it is fair to conclude that large
numbers of individuals in the Southern California and Salt
Lake City areas would be exposed to the names of these
Ser No. 76277664
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elected officials, whether during an election campaign, in
a polling place, or in news reports on government
activities.
Outside of politics, the record reveals that Wilber
Rogan is enshrined in the National Baseball Hall of Fame;
that the author Barbara Rogan has written seven books
published in 35 editions and eight languages and is an
instructor at Hofstra University on Long Island; that Seth
Rogan is a comedian and actor who has made many public
appearances;4 that Joe Rogan is an actor and comedian who
has appeared on the television program "News Radio"; and
that Joe Rogan is the host of an NBC television show
entitled "Fear Factor."5
The existence of these individuals with the surname
ROGAN leads us to conclude that the name may be rare when
viewed in terms of frequency of use as a surname in the
general population, but not at all rare when viewed as a
4 A web page "bio" lists his name as Seth Rogen (with an "e"),
but the web page address lists the name as Rogan (with an "a") as
does one of the NEXIS article excerpts, which refers to Seth
Rogan in a list of celebrities. Thus, we conclude that the Rogen
spelling is a typographical error. Were it clear that Rogen is
the correct spelling, we would, of course, not consider this item
of evidence in regard to the rareness factor. Discounting this
item would not, however, change our decision.
5 It may be that Joe Rogan from "News Radio" and Joe Rogan from
"Fear Factor" is the same individual. We cannot tell from the
record.
Ser No. 76277664
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name repeated in the media and in terms of public
perception. Accordingly, we conclude that ROGAN is not a
rare surname. We are not persuaded otherwise by
applicant's evidence showing that KELLY and SMITH are much
more common surnames than HACKLER or ROGAN.
As to the second factor, applicant asserts that ROGAN
is his first name and not the surname of any individual
involved in design, manufacture or production of
applicant's products. On the other hand, applicant does
not claim that he promotes recognition of the ROGAN name as
a first name. While the examining attorney has conceded
that this factor favors applicant, we find the factor
neutral. In a situation wherein an individual applicant,
or an officer or employee, for example, of a corporate
applicant, actually has the surname proposed as a mark,
this would certainly weigh against the applicant. Benthin,
37 USPQ2d at 1333 (even though Benthin was ultimately found
not primarily merely a surname, the second factor weighed
against the applicant because Benthin was the surname of
applicant's Managing Director). In contrast, that a
proposed mark is not the applicant's surname, or the
surname of an officer or employee, does not tend to
establish one way or the other whether the proposed mark
would be perceived as a surname.
Ser No. 76277664
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Applicant and the examining attorney obviously differ
on the question of whether ROGAN has significance other
than as a surname. The examining attorney asserts that
ROGAN has no meaning other than as a surname. Applicant
relies on the fact that ROGAN is his first name; on the
Internet "atlas query" and his contention that the results
of this query show that ROGAN is the root of certain place
names; and on the evidence that there is an Indian dish
known as "rogan josh."
Applicant has not put anything in the record to show
how commonly ROGAN is used as a first name rather than a
surname, while we have a good deal of evidence of its use
as a surname. Cf. In Re Harris-Intertype Corporation, 518
F.2d 629, 186 USPQ 238, 240 (CCPA 1975) (dictionary listing
of HARRIS as given name noted that it is derived from a
surname). As to the results of the atlas query, we agree
with the examining attorney that the apparent existence of
a place named "Rogan" in the Ukraine and "Rogans Hill" in
Australia is not evidence of whether consumers in the
United States will perceive ROGAN as having a non-surname
meaning. In re Sava Research Corp., 32 USPQ2d 1380, 1381
(TTAB 1994). On the other hand, while the existence of
places named "Rogana" and "Roganville" in, respectively,
Tennessee and Texas, can be considered as evidence because
Ser No. 76277664
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these uses are in the United States, the existence of
Roganville may actually support the conclusion that "Rogan"
would be viewed as a surname by individuals in that place
(or familiar with it). Harris-Intertype, 186 USPQ at 239
(CCPA 1975) (cities, counties, streets, lakes and other
things may derive their names from an individual's name).6
Moreover, there is nothing in the record to show that any
of these places are so well known that the geographic
significance of, for example, Roganville as a place name
would overshadow the surname significance of the term
ROGAN. Cf. In re Colt Industries Operating Corp., 195 USPQ
75 (TTAB 1977) (significance of FAIRBANKS as a well-known
city in Alaska at least equal to its surname significance).
We also accord little weight to the existence of the
Indian dish "rogan josh." There is nothing in the record
to indicate whether the dish is actually available at
Indian restaurants in the United States and, if so, how
widely. The web site setting forth a recipe for "chicken
rogan" appears to be a web site based in the United Kingdom
(www.miketaylor.org.uk/misc/recipes/rogan.html), and also
is unsupported by evidence that diners or cooks in the
United States would be familiar with it.
6 While Roganville has the look of a place name created by
coupling "Rogan" and the common suffix "ville," Rogana is
Ser No. 76277664
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We conclude that the clearly dominant meaning of ROGAN
is as a surname and would at most have but some obscure
association with minor localities or Indian food. This
factor therefore favors the examining attorney's refusal of
registration.
We come, then, to the last factor to be discussed,
i.e., whether ROGAN has the look and sound of a surname.
When a term does not have the look and sound of a surname,
it clearly aids the applicant. On the other hand, when it
does look and sound like a surname, such a finding merely
tends to reinforce a conclusion that the term's primary
significance is as a surname.
We conclude that ROGAN has the look and sound of a
surname. It would not be perceived as an initialism or
acronym, see Sava, supra, and does not have the appearance
of having been coined by combining a root element that has
a readily understood meaning in its own right with either a
prefix or a suffix. Rather, ROGAN appears to be a cohesive
term with no meaning other than as a surname. In fact, the
evidence regarding the number of individuals having ROGAN
as a surname, including those who, as politicians or
celebrities, have received more attention than the average
different. It does not have the look of a place name made by
coupling "Rogan" with the letter "a."
Ser No. 76277664
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individual named ROGAN, also supports the finding ROGAN
looks and sounds like a surname.
Balancing the various factors, we find that ROGAN is
not a rarely used surname, has the look and sound of a
surname, and its primary significance as a surname is not
outweighed by other meanings which may be ascribed to the
term. See Harris-Intertype, supra, and In re Hamilton
Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993).
Decision: The refusal of registration under Section
2(e)(4), on the ground that ROGAN is primarily merely a
surname, is affirmed.