Gregory

Trademark Trial and Appeal Board

Sep 28, 2004

No. 76442899 (T.T.A.B. Sep. 28, 2004)

Hearing: Mailed:
August 3, 2004 September 28, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gregory
________
Serial No. 76442899
_______
Paul J. Vincenti of Vincenti & Vincenti, P.C. for Rogan S.
Gregory.
Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 113 (Odette Bonnet, 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 (stylized) on the Principal Register as a
trademark for goods identified as "fabric handbags, leather
handbags and wallets," in International Class 18, and
"pants, shirts, and 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 both classes. Because the degree of
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76442899
2
stylization of the proposed mark is a factor in our
analysis of the refusal, the mark is reproduced below:
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 (stylized) is
primarily merely a surname. When the refusal was later
made final, applicant filed a notice of appeal.1 Applicant
and the examining attorney filed briefs and appeared at an
oral argument before the Board.
At this point, we note that a related application,
which sought registration of ROGAN in typed form on the
Principal Register for the same goods involved herein (as
well as for certain other goods) was examined by a
different examining attorney who created a different
record. Applicant's arguments and evidence in support of
registration of the stylized version of ROGAN, however, are
largely the same as were presented in the other
application. This panel of the Board affirmed the refusal
of registration in the earlier application, and our
1 The final refusal noted for applicant the option of amending
the application to seek registration on the Supplemental
Register. No such amendment was made.
Ser No. 76442899
3
decision is reported at In re Gregory, 70 USPQ2d 1792 (TTAB
2004).
In the case at hand, the first office action setting
forth the refusal of registration stated the examining
attorney's view that the "stylization of lettering in the
mark does not change the surname significance." As
evidence to support the refusal, the examining attorney
attached to the action the first 10 listings he was able to
retrieve from www.people.yahoo.com, to "illustrate the
surname significance of the mark." Additional evidence
attached to the examining attorney's subsequent office
action finally refusing registration are reprints of the
first 200 listings of individuals with the surname "Rogan,"
retrieved from the "USFIND Person Locator – Nationwide"
database, available through the LEXIS online research
service. The introductory summary of the results of the
search indicates that there were 2,229 "hits" when the
search was conducted. Finally, with his brief, the
examining attorney submitted photocopies of pages from
three dictionaries and a request that we take judicial
notice that "Rogan" does not appear in any of the three.2
2 These are Merriam-Webster's Geographical Dictionary, Merriam-
Webster's Collegiate Dictionary, and the Cassell Dictionary of
Proper Names.
Ser No. 76442899
4
Responding to the examining attorney's request that we
take judicial notice of the absence of entries for "Rogan"
in three different types of dictionaries, applicant
asserted in his reply brief that the submissions were made
too late but that he would not object to their
consideration so long as the Board would also take judicial
notice of certain Internet-based "baby name dictionaries
and directories" which assertedly show that "Rogan" has
"first name significance."3
In our experience, it unfortunately has become all too
common for examining attorneys and applicants to delay
submitting readily available evidence, particularly
dictionary definitions, until the briefing of an appeal.
This practice deters thorough discussion by examining
attorneys and applicants of the weight to be accorded
evidence.4 In this case, we deny the respective requests
that we take judicial notice. As for the examining
attorney's request, while the Board has often taken
3 The web page addresses include: www.baby-names-world.com,
www.parentsplace.com, www.pregnancy.about.com,
www.babynameworld.com, and www.dublinuncovered.net/irishnames.
4 Requests that the Board take judicial notice of dictionary
definitions should at a minimum be set forth in the main briefs
of the applicant and examining attorney, so that the examining
attorney will have an opportunity to respond to what an applicant
addresses in its main brief and the applicant will, with its
reply brief, have an opportunity to respond to whatever the
examining attorney may advance in a main brief.
Ser No. 76442899
5
judicial notice of dictionary definitions, not one of the
authorities on which the examining attorney bases his
request stands for the proposition that we may, or must,
take judicial notice of the absence of a definition from a
dictionary.5 As for the applicant's request, Internet web
pages are not proper subjects for judicial notice. See In
re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB
1999) (Board refused to take judicial notice of definitions
from online dictionary not also available in printed form).
See also, Raccioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB
1998). Accordingly, we will not consider the arguments
made by either the examining attorney or by applicant which
rely on the materials covered by the respective requests
that we take judicial notice.
Having reviewed the evidence properly submitted by the
examining attorney and having addressed the respective
requests made during briefing that we take judicial notice,
we now review the evidence submitted by applicant. This
5 While in the case of American Security Bank v. American
Security and Trust Co., 571 F.2d 564, 197 USPQ 65, 67 n.1 (CCPA
1978), judicial notice was taken of the absence of a listing from
a telephone directory, we view that decision as distinguishable
and limited to its particular facts. Moreover, it does not
appear that, in this case, the examining attorney is merely
seeking to have us judicially notice the fact that listings do
not appear but rather the "fact" that, because there are no
listings, ROGAN is not a recognized place name, first name or
name of a food item, as applicant contends. In this regard, the
examining attorney seeks too much from judicial notice.
Ser No. 76442899
6
includes a declaration of applicant's counsel 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 plain, i.e., uncertified copy
of applicant's registration of a stylized letter "r,"
covering the goods involved herein;6 an Internet 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
Internet web pages featuring recipes for an Indian dish
named "rogan josh" (described as "one of the classic Mogul
dishes,"7 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,
6 The display of the letter "r" is identical to the display of
the first letter of the mark involved in this appeal. The
registration does not include a description of the mark, but
applicant states it is "a stylized 'r.'"
7 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. 76442899
7
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).
As to the first factor, applicant argues that the
existence of approximately 200 listings of ROGAN in one
database and 2200 in another, out of an asserted 90 million
Ser No. 76442899
8
listings covered by the databases, evidences that the ROGAN
surname is rare.8 Also, applicant has argued that his
searches of the hamrick.com website show that individuals
with the ROGAN surname are scattered in small numbers
around the United States. Finally, applicant argues that
the Board previously has found HACKLER to be a rare surname
and that, in terms of frequency of occurrence throughout
the various states, HACKLER and ROGAN appear with just
about the same frequency. (According to applicant's
analysis, in 41 of 50 states ROGAN appears approximately
once in every 8,500 names and in 40 of 50 states, HACKLER
appears approximately once in every 8,500 names.) See In
re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (Board
reversed refusal to register HACKLER).
We do not view the United Distillers decision as
setting a per se benchmark stating that unless there are
8 In fact, there is nothing in the record that reveals the total
number of listings in either of the databases searched by the
examining attorney in this case. In the prior appeal of the
refusal to register ROGAN in typed form, we accepted applicant's
contention that the search by the examining attorney in that case
of the ReferenceUSA database involved a search of a database with
90 million listings. This was based in part on applicant's
contention that the Phonedisc database discussed in other,
unrelated cases had 80 million listings and the Phonedisc
database had been renamed the ReferenceUSA database and had
expanded. In the case at hand, applicant appears to be assuming
that the www.people.yahoo.com and "USFIND Person Locator –
Nationwide" databases have the same number of listings as the
ReferenceUSA database.
Ser No. 76442899
9
many more than 1300 listings in a database of telephone
listings, or unless a surname appears with more frequency
than HACKLER, the 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. 76442899
10
number of different surnames in the United States, even the
most common surnames would represent but small fractions of
such a database. The listings the examining attorney
excerpted from his search of the "USFIND Person Locator –
Nationwide" database show that individuals with the surname
Rogan live in states up and down the East and West Coasts,
in the Midwest, South and Soutwest. 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
connected with him. The examining attorney has conceded
this factor, apparently concluding that it therefore favors
applicant. We, however, find the factor neutral. We note,
in this regard, that applicant does not claim that he
promotes recognition of the ROGAN name as a first name. 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
Ser No. 76442899
11
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.
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
Ser No. 76442899
12
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 probative
evidence because 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).9 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).
9 While Roganville has the look of a place name created by
coupling "Rogan" and the common suffix "ville," Rogana is
different. It does not have the look of a place name made by
coupling "Rogan" with the letter "a."
Ser No. 76442899
13
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.
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.
The next factor to be discussed is 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
Ser No. 76442899
14
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.
We turn, then, to the last factor to be considered,
i.e., whether the degree of stylization of ROGAN is
distinctive enough to create a separate, non-surname
impression.
Applicant's stylization of ROGAN is in a block
lettering style, mixing lower case (the leading "r" and
final "n") and upper case (the middle letters "OGA") but in
a way that presents them as being the same size.10 Further,
the look of the lettering is that which might be achieved
by hand stenciling. We find nothing in applicant's mixing
of upper and lower case block letters, or in the hand-
stenciled look of the letters, that would suffice to create
a distinct commercial impression apart from the impression
that this term is someone's name. Considering the
specimens applicant has submitted and how they might
influence consumer perception, we note that one specimen is
a very dark photocopy of what appears to be either a denim
10 We have no way of knowing whether applicant intends the "O" in
his proposed mark to be perceived as an upper or lower case
letter. We acknowledge some might perceive it as a lower case
letter. Even if it could be assumed that all potential consumers
might view it so, it would not change our decision.
Ser No. 76442899
15
article of clothing or a denim fabric handbag. If the
proposed mark was on this item when it was photocopied, the
photocopying has obscured it, for we do not see it at all.
The other specimens are fabric labels of the sort that
would be sewn into a garment or handbag, and contain lines
for listing one's name and address, as well as a manila
hang-tag, with a partially obscured address and the phrase
"A LITL BETr" (with the letters of this phrase in plain
sans serif type and the concluding lower case "r" set forth
in the same size as the other letters and in the style of
the proposed mark).
We do not consider it appropriate to assess whether
applicant's display of ROGAN on the manila hang-tag creates
a distinct commercial impression because of the method of
its display, for it is a different form of display than
that which applicant seeks to register.11 Turning to the
fabric labels that could be sewn into a garment or handbag,
we see nothing in applicant's method of actual use of the
proposed mark that would change our conclusion that the
mixed upper and lower case lettering and hand-stenciled
11 We are not dealing with the question whether the hang-tag would
support an application to register ROGAN in typed form. If that
were the question we might in our analysis rely on a variety of
displays. In this case, however, applicant is seeking
registration of a particular form of display. Thus, we confine
our analysis to the likely perception of the specimens that show
that display.
Ser No. 76442899
16
look of the lettering fail to create a distinct commercial
impression.
We are not persuaded otherwise by applicant's reliance
on the USPTO's issuance of a registration for his stylized
letter "r" mark. Applicant contends that issuance of this
registration establishes that the letter mark has been
found by the USPTO to be "arbitrary and fanciful and, thus,
highly stylized." Because applicant also contends that the
letter "r" is the "focal point" of the proposed mark
involved herein, he concludes that the proposed mark cannot
have the look and sound of a surname. We disagree with
applicant's conclusions about the significance of the prior
registration. First, there is no per se prohibition
against registering a single letter (whether in ordinary
type or stylized) as a mark; and thus the mere registration
of applicant's "r" mark does not establish one way or the
other whether the fact of registration means the letter
must be perceived as "arbitrary or fanciful." Second,
applicant has not established that either the examining
attorney who approved the letter mark for publication for
opposition, or this Board, ever stated a conclusion about
the letter mark. Finally, it is only supposition on
Ser No. 76442899
17
applicant's part that consumers would view the letter "r"
as the focal point of applicant's involved mark.12
Applicant and the examining attorney, furthermore,
disagree about the significance of a non-citable decision
of the Board finding another party's mark to be
particularly stylized and therefore not primarily merely a
surname. As one would expect, applicant considers his mark
just as stylized, and the examining attorney considers
applicant's mark far less stylized than the other mark that
was registered. The Board's policy not to consider prior
decisions unless they are issued as citable precedent is
often-stated. Thus, notwithstanding the willingness of
applicant and the examining attorney to discuss this case,
we shall not. More importantly, as noted earlier in this
decision, each case involving a refusal of registration
under Section 2(e)(4) must be considered on its own merits
and comparisons to other cases are not generally helpful.
See In re Etablissements Darty et Fils, 759 F.2d 15, 225
USPQ 652, 653 (Fed. Cir. 1985).
Balancing the various factors, we find that ROGAN is
not a rarely used surname, that it has the look and sound
12 The "focal point" argument might have more logic behind it if
the involved mark were the mark on the manila hang tag specimen,
which has a letter "r" much larger than the other letters in
ROGAN. However, as discussed herein, we have disregarded that
specimen.
Ser No. 76442899
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of a surname, and that its primary significance as a
surname is not outweighed by other meanings which may be
ascribed to the term or by the stylized form of lettering
employed by applicant. 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 (stylized) is primarily
merely a surname, is affirmed.