Amlin plc

Trademark Trial and Appeal Board

Sep 30, 2008

No. 79011475 (T.T.A.B. Sep. 30, 2008)

Hearing: Mailed:
June 11, 2008 September 30, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Amlin plc
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Serial No. 79011475
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Jordan A. LaVine of Flaster Greenberg P.C. for Amlin plc.

Tina Brown, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Rogers and Wellington, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Amlin plc seeks registration on the Principal Register
of the mark AMLIN (in standard character format) for services
recited in the application, as amended, as follows:
“insurance services and financial services
relating to the insurance industry, namely,
insurance underwriting in the fields of life,
health, accident, fire, aviation and
satellite, motor, marine, real estate,
personal property, fine art, financial
trading, professional indemnity, US and
international catastrophe; reinsurance
underwriting; insurance and reinsurance
brokerage; insurance claims administration;
electronic processing of insurance claims and
payment data; appraisals for insurance
claims; insurance claims processing;
insurance consultation; financial analysis
and consultation relating to insurance
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79011475
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premiums and claims; financial evaluation for
insurance purposes; financial management for
insurance purposes; financial planning for
insurance purposes; financial portfolio
management for insurance purposes” in
International Class 36.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation under Section 2(e)(4) of the
Trademark Act, 15 U.S.C. Section 1052(e)(4), because the
proposed mark is primarily merely a surname.
Applicant and the Trademark Examining Attorney
submitted main briefs, and both appeared at a hearing before
this panel of the Board on June 11, 2008. We reverse the
refusal to register.
The test for determining whether a mark is primarily
merely a surname is the primary significance of the mark to
the purchasing public. See In re Hutchinson Technology
Inc., 852 F.2d 552, 554, 7 UPQ2d 1490, 1492 (Fed. Cir.
1988), citing In re Kahan & Weisz Jewelry Mfg. Corp.,
508 F.2d 831, 184 USPQ 421 (CCPA 1975) and In re Harris-
Intertype Corp., 518 F.2d 629, 186 USPQ 238 (CCPA 1975).
The initial burden is on the Trademark Examining Attorney to

1 On April 25, 2005, applicant made a Request for Extension of
Protection, seeking registration on the Principal Register under
Section 66(a) of the Trademark Act. On July 7, 2005, the
application was forwarded to the United States Patent and
Trademark Office, and assigned application Serial No. 79011475.

Serial No. 79011475
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establish a prima facie case that a mark is primarily merely
a surname. See In re Etablissements Darty et Fils, 759 F.2d
15, 16, 225 USPQ 652, 653 (Fed. Cir. 1985). After the
Trademark Examining Attorney establishes a prima facie case,
the burden shifts to the applicant to rebut this finding.
The Board, in the past, has considered several
different factors in making a surname determination under
Section 2(e)(4): (i) the rarity of the surname; (ii)
whether anyone connected with applicant has the surname;
(iii) whether the term has any recognized meaning other than
that of a surname; and (iv) the structure and pronunciation
or “look and feel” of the surname. In re Joint-Stock Co.
“Baik,” 84 USPQ2d 1921, 1922 (TTAB 2007); and In re Benthin
Management GmbH, 37 USPQ2d 1332, 1333 (TTAB 1995).
Rareness
The following number of “Amlin” listings were located in
these various electronic databases by applicant and by the
Trademark Examining Attorney:
Source:
No. of
Listings
http://www.411.com/ 111
http://www.directory-assistance.net/ 127
http://people.yahoo.com/ 154
LexisNexis® “P-FIND” database 165
http://www.whitepages.com/ 174
http://zabasearch.com/ 192

Serial No. 79011475
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Applicant argues that “Amlin” is an extremely rare
surname while the Trademark Examining Attorney contends
that it is a relatively rare surname. Eliminating the
unavoidable duplication in the databases and choosing a
midrange of one-hundred-fifty separate listings in the
entire United States, we are looking at a surname for only
one in every two million individuals in the U.S.
population. Hence, we agree with applicant that “Amlin”
is such an extremely rare surname that few prospective
consumers are likely to perceive it as a surname, and
substantially no one will be adversely affected by the
registration of this term for the recited services.
Similarly, the articles placed into the record by the
Trademark Examining Attorney fall far short of supporting
her contention that the surname “Amlin” commonly appears in
newspapers and other media, or of supporting a finding that
individuals having this surname have enjoyed broad exposure to
the general public such that “Amlin” is well recognized as a
surname. Contra In re Gregory, 70 USPQ2d 1792, 1795 (TTAB
2004).
Accordingly, this factor favors the position of
applicant.
Serial No. 79011475
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Surname of anyone connected with applicant?
As to the second Benthin factor, there is no evidence
in this record that someone with the surname “Amlin” is
associated with applicant, making this factor, from
applicant’s perspective, neutral at worst. On the other
hand, applicant points to the merger of its predecessor in
interest with another firm in 1998, where initials (A ML IN)
were joined together in a logical way to coin a trade name
for the newly-formed company.2 Hence, we accept applicant’s
representation that AMLIN is a coined term, finding this to
be a most credible explanation for the origins of its
company name.
Other Meanings
The third factor we consider is whether the term has a
recognized meaning other than that of a surname. The
Trademark Examining Attorney has submitted dictionary

2 “As a legal entity, Applicant was formed as Angerstein
Underwriting Trust plc in 1993. It changed its name to Amlin
plc in 1998 upon its merger with the Murray Lawrence Group in
1998. Applicant’s “Amlin” trademark and name were coined by
combining: (1) the first letter of its former “Angerstein
Underwriting Trust plc” name, i.e., “A,” (2) the initial
letters of the merging company “Murray Lawrence,” i.e., “M” and
“L,” (3) and the letters “in,” which was intended to suggest the
primary focus of Applicant’s business, namely, insurance and
reinsurance services.”
Bale Declaration attached to Request for Reconsideration, July 17,
2007.

Serial No. 79011475
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evidence to show that the word “Amlin” is not listed in any
dictionary, thus indicating that it does not have any non-
surname meaning. Applicant has not argued that the term
“Amlin” has another non-surname meaning, but as noted above,
explains the recent origins of the term in the United
Kingdom in connection with insurance and reinsurance
underwriting. While a significant non-surname meaning
usually helps the position of an applicant, we find that the
converse (i.e., a determination that the involved term does
not have any non-surname meaning) does not help
significantly the position of the Trademark Examining
Attorney.
Look and Feel
The final factor for our consideration is the somewhat
subjective factor of whether or not the word “Amlin” has the
look and feel of a surname. In support of her position, the
Trademark Examining Attorney points to examples of similar
sounding surnames, most of which were even rarer than Amlin.
See In re Joint-Stock Co. “Baik,” 84 USPQ2d at 1924.
Moreover, absent corroborating factors, we find that the
Trademark Examining Attorney cannot base a prima facie case
under Section 2(e)(4) of the Act on the mere fact that the
rare surname at issue has some similarity in structure and
Serial No. 79011475
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pronunciation to another, more common surname, like
“Hamlin.” Id.
In conclusion, based upon the record in this case, we
find that the Trademark Examining Attorney has failed to
meet the burden of establishing a prima facie case that
“Amlin” is primarily merely a surname.
Furthermore, applicant is correct in contending that,
in the event there is any doubt about whether the Trademark
Examining Attorney has set forth a prima facie case in
support of refusal, we must resolve such doubt in favor of
applicant, and publish the mark for opposition in the
Trademark Official Gazette. See In re Benthin Management
GmbH, 37 USPQ2d at 1334.
Decision: The refusal to register the term AMLIN on
the ground that it is primarily merely a surname under
Section 2(e)(4) of the Lanham Act is hereby reversed.