Baldwin Hardware Corp.

Trademark Trial and Appeal Board

Dec 7, 2000

No. 75403890 (T.T.A.B. Dec. 7, 2000)

12/7/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Baldwin Hardware Coporation
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Serial No. 75/403,890
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Edgar A. Zarins for Baldwin Hardware Corporation
Karen A. McGee, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney)
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Before Hanak, Hairston and Holtzman, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Baldwin Hardware Coporation (applicant) seeks to
register BLAKELY in typed drawing form for “metal door
hardware, namely, locks, latches and knobs.” The intent-
to-use application was filed on December 11, 1997.
The Examining Attorney refused registration pursuant
to Section 2(e)(4) of the Trademark Act on the basis that
BLAKELY is primarily merely a surname.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request an oral hearing.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/403890
2
We note that the “the PTO [has] the burden of
establishing a prima facie case that [BLAKELY] is
‘primarily merely a surname.’” In re Etablissements Darty
et Fils, 759 F.2d 15, 255 USPQ 652, 653 (Fed. Cir. 1985).
Moreover, “the question of whether a [mark] sought to be
registered is primarily merely a surname within the meaning
of the statute can be resolved only on a case by case
basis,” taking into account a number of various factual
considerations. Darty et fils, 225 USPQ at 653.
In this case, there are four factors which are
relevant to a determination of whether BLAKELY would be
perceived as primarily merely a surname. The first three
factors are fairly objective. The final factor is
decidedly subjective.
The first factor to be considered is “the degree of a
surname’s rareness.” In re Garan Inc., 3 USPQ2d 1537, 1540
(TTAB 1987). See also In re Sava Research Corp., 32 USPQ2d
1380, 1381 (TTAB 1994). In this regard, the Examining
Attorney made of record a printout from the PHONEDISC
POWERFINDER USA ONE 1998 data base showing that out of 115
million listings, there are over 4,200 persons whose
surname is BLAKELY.
In view of the evidence, we find that BLAKELY is not a
rare surname, and that this first factor weighs in favor of
Ser No. 75/403890
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a finding that BLAKELY would be perceived as primarily
merely a surname. To elaborate, this evidence shows that
about 1 in 27,000 individuals has the surname BLAKELY.
Thus, on average, even a modest size town would have one
person whose last name is BLAKELY.
A second factor to be considered in determining
whether BLAKELY would be perceived as primarily merely a
surname is whether there is “anyone connected with
applicant” having the surname BLAKELY. In re Monotype
Corp., 14 USPQ2d 1070, 1071 (TTAB 1989). See also Sava, 32
USPQ2d at 1381. In this regard, it is undisputed that no
person associated with applicant is named BLAKELY, and thus
this second factor weighs in favor of a finding that the
mark BLAKELY would not be perceived as primarily merely a
surname.
A third factor to be considered is whether or not
BLAKELY has any “recognized meaning other than that of a
surname.” In re BDH Two Inc., 26 USPQ2d 1556, 1558 (TTAB
1993). See also Sava, 32 USPQ2d at 1381. The record is
devoid of any evidence showing that BLAKELY has any
“recognized” meaning other than that of a surname. Thus,
this third factor weighs in favor of a finding that BLAKELY
would be perceived as primarily merely a surname. The only
non-surname uses of BLAKELY are as the names of two small
Ser No. 75/403890
4
towns (in Georgia and Pennsylvania) each having a
population of less than 7,500.
This brings us to the fourth factor to be considered,
which is decidedly subjective in nature. This fourth
factor is whether BLAKELY has the “structure and
pronunciation” of a surname, or stated somewhat
differently, the “look and sound” of a surname. In re
Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988); Sava,
32 USPQ2d at 1381. As stated in Industrie Pirelli,
“certain rare surnames look like surnames, and certain
rare surnames do not and that ‘Pirelli’ falls into the
former category, while ‘Kodak’ falls into the later.” 9
USPQ2d at 1566. In our judgment, BLAKELY does have the
clear look and sound of a surname, and this weighs in favor
of finding that BLAKELY would be perceived as primarily
merely a surname.
In sum, while factor two favors applicant’s position,
the other three factors cause us to find that BLAKELY would
be perceived as primarily merely a surname.
Ser No. 75/403890
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Decsion: The refusal to register is affirmed.
E. W. Hanak
P. T. Hairston
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
And Appeal Board