Arrowsmith Int'l., Inc.

Trademark Trial and Appeal Board

Oct 4, 2000

No. 75299225 (T.T.A.B. Oct. 4, 2000)

Hearing: Paper No. 12
April 12, 2000 10/4/00
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Arrowsmith International, Inc.
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Serial No. 75/299,225
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Michael R. Dinnin of Dinnin & Dunn, P.C. for Arrowsmith
International, Inc.
David H. Stine, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Arrowsmith International, Inc., a corporation of
Michigan, has filed an intent to use application to register
the word “ARROWSMITH” for “metal dies, jigs, and fixtures
for use with machine tools,” in International Class 6.1
The Trademark 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 applicant's mark is
primarily merely a surname.

1 Application Serial No. 75/299,225, filed May 28, 1997, based
upon a bona fide intention to use the mark in commerce under
Section 1(b), 15 U.S.C. §1051(b).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/299,225
2
When the refusal to register was made final, applicant
appealed. Applicant and the Trademark Examining Attorney
have filed briefs. Applicant requested an oral hearing
before the Board, and the applicant and the Trademark
Examining Attorney participated in this hearing.
We affirm the refusal to register.
In support of his surname refusal, the Trademark
Examining Attorney has made of record the results of a
search of a database containing ninety million names,
finding 554 “Arrowsmith” surname listings from PHONEDISC
POWERFINDER USA ONE 1997 (3rd ed.).
Applicant argues that the Trademark Examining Attorney
has failed to establish a prima facie surname case.
Applicant challenges the Trademark Examining Attorney’s
PHONEDISC evidence on the ground that the quantum of evidence
submitted by the Examining Attorney is indeterminate of the
primary significance of the term to purchasers. Applicant
asserts that “Arrowsmith” was registered in six federal
registrations now cancelled or abandoned. Finally,
applicant has also argued that the word “Arrowsmith” has
numerous other uses or meanings based upon an Internet
search it conducted.
The test for determining whether a mark is primarily
merely a surname is the primary significance of the mark to
Serial No. 75/299,225
3
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
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 degree of surname rareness; (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 sound” of the surname. In re Benthin
Management GmbH, 37 USPQ2d 1332 (TTAB 1995).
There is no doubt that the Trademark Examining Attorney
has met his initial burden of establishing that “ARROWSMITH”
would be perceived by consumers as primarily merely a
surname. In particular, the Trademark Examining Attorney
has presented evidence of over five hundred “ARROWSMITH”
Serial No. 75/299,225
4
surname references from the PHONEDISC database. The Court of
Appeals for the Federal Circuit has held that this type of
evidence is sufficient to establish a prima facie surname
case. See Hutchinson Technology, 852 F.2d at 554, 7 USPQ2d
at 1492; Darty, 759 F.2d at 16, 225 USPQ at 653; see also 2
J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION,
§13.30, p. 13-50 (4th ed. 1999).
The Trademark Examining Attorney’s PHONEDISC evidence is
collected from telephone directories and address books
across the country. There is no magic number of directory
listings required to establish a prima facie surname case.
In re Cazes, 21 USPQ2d 1796, 1797 (TTAB 1991); In re
Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566
(TTAB 1988), aff’d unpublished decision, No. 89-1231 (Fed.
Cir. 1989). It is reasonable to conclude from these
submissions that “ARROWSMITH,” while obviously not as common
as some other surnames, has had measurable public exposure.2
Even if “ARROWSMITH” is an uncommon surname, it is by no
means a decidedly rare surname.3

2 To the extent applicant contends that ARROWSMITH is an
uncommon surname, we would point out that even uncommon surnames
may not be registrable on the Principal Register. See Industrie
Pirelli, 9 USPQ2d at 1566.
3 This evidence is far more significant than the number of
listings presented in other cases where the surname has been
categorized as “rare.” See e.g. Kahan & Weisz, 508 F.2d at 832,
184 USPQ at 422 (six DUCHARME surname telephone directory
listings); In re Sava Research Corp., 32 USPQ2d 1380 (TTAB
Serial No. 75/299,225
5
Applicant dismisses more than five hundred “Arrowsmith”
listings from the PHONEDISC database as representing only
“0.0006%” of the American population. However, we find this
“percentage-of-the-entire-population” argument to be a
hollow reed. Given the rich diversity of surnames in this
country, if one were to take a statistical measurement of
this database, even a common surname like “Jones” would
constitute a relatively small fraction of the total database
content.
As to the second Benthin factor, we recognize that no
one connected to applicant’s organization, past or present,
has been shown to have the “Arrowsmith” surname. If an
Arrowsmith were associated in some way with applicant, it
could well indicate the public’s recognition of the term as
a surname. However, logic tells us that the converse is not
necessarily true, i.e., the mere fact that this query comes
up negative herein cannot compel the conclusion that
consumers will not perceive the term as a surname.

1994)(one hundred SAVA surname telephone directory listings);
Benthin Management, 37 USPQ2d at 1333 (one hundred BENTHIN surname
telephone directory listings); In re Garan, Inc., 3 USPQ2d 1537
(TTAB 1987)(six GARAN telephone directory listings and one NEXIS
listing). This is one of four factors. Hence, the quantum of
PHONEDISC evidence which may be persuasive for finding surname
significance in one case may be insufficient in another because of
differences in the surnames themselves and/or consideration of the
other relevant surname factors. Darty, supra.
Serial No. 75/299,225
6
In weighing the third Benthin factor, we have
considered applicant’s contention that “Arrowsmith” has
meanings other than that of a surname. However, both the
Benthin decision and our primary reviewing court clearly
require that the other meanings be “recognized” by a
significant number of people. See Harris-Intertype, supra;
Benthin Management, supra. We do not believe that a
significant number of people would recognize the other
meanings proffered by applicant from its Internet search in
this case because they are remote or obscure (e.g., for
several other small enterprises including an antique shop in
New Mexico or the name of a small town and auction center in
Illinois). The mere fact that the word “Arrowsmith” has
nine obscure or remote meanings is insufficient to show that
it will not be perceived as “primarily merely a surname.”
See Harris-Intertype, supra; In re Hamilton Pharmaceuticals
Ltd., 27 USPQ2d 1939, 1942 (TTAB 1993).
Finally, as to the fourth Benthin factor, it is the
view of the Board that “ARROWSMITH” has the structure and
pronunciation of a surname, not of an arbitrary designation.
See Garan, 3 USPQ2d at 1538; Industrie Pirelli, 9 USPQ2d at
1566.4 In fact, judging this matter simply by its look and

4 The Trademark Examining Attorney has also pointed out that
three of the prior federal registrations for “ARROWSMITH” issued
Serial No. 75/299,225
7
feel, “ARROWSMITH” seems to fit the archetype of surnames
having a “-smith” suffix, such as Goldsmith, Hammersmith and
Coopersmith.
Decision: The refusal to register the mark
“ARROWSMITH” under Section 2(e)(4) is affirmed.
E. J. Seeherman
P. T. Hairston
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

under Section 2(f) of the Act. The others are “Arrowsmith”
coupled with a distinctive design element. Such a composite is
not considered primarily merely a surname. See Benthin
Management, supra, and TMEP §1211.01(b). Accordingly, these
cancelled and expired registrations reflect a consistent approach
by the U.S. Patent & Trademark Office over several decades that
“ARROWSMITH,” without more, is primarily merely a surname.