Bayerische Motoren Werke AG

Trademark Trial and Appeal Board

Sep 29, 2016

No. 79150636 (T.T.A.B. Sep. 29, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bayerische Motoren Werke AG
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Serial No. 79150636
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Jessica D. Bradley of Jones Day, for Bayerische Motoren Werke AG.

Rebecca Povarchuk, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
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Before Lykos, Shaw and Adlin,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Pursuant to Section 66(a) of the Act, 15 U.S.C. § 1141f(a), Bayerische Motoren
Werke AG (“Applicant”) filed a Request for Extension of Protection of an international
registration for the mark CULLINAN (in standard characters) for the following
goods: “Motor vehicles, namely, automobiles, sports utility vehicles and light trucks;
parts of aforesaid goods, namely, structural parts, engines and wheels,” in
International Class12.1

1 Application Serial No. 79150636, filed on August 14, 2014, with a priority filing date of
March 19, 2014, based on International Registration No. 1212768.
Serial No. 79150636
2
The Trademark Examining Attorney refused registration under Section 2(e)(4) of
the Trademark Act, 15 U.S.C. § 1052(e)(4), on the ground that the mark is primarily
merely a surname. When the refusal was made final, Applicant appealed and
requested reconsideration. The Examining Attorney denied the request for
reconsideration and this appeal proceeded. The appeal is fully briefed. We affirm the
refusal to register.
Section 2(e)(4) Primarily Merely a Surname
Section 2(e)(4) of the Trademark Act precludes registration on the Principal
Register of a mark which is “primarily merely a surname” without a showing of
acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f). The
primary significance of the mark to the purchasing public determines whether it is
primarily merely a surname. In re Hutchinson Tech., Inc., 852 F.2d 552, 7 USPQ2d
1490, 1492 (Fed. Cir. 1988); In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ
652, 654 (Fed. Cir. 1985).
The USPTO has the burden of establishing a prima facie case that a term is
primarily merely a surname. Etablissements Darty, 225 USPQ at 653. “Only after the
PTO has presented a prima facie case that a mark is primarily merely a surname will
the burden switch to the applicant to rebut this finding.” Hutchinson Tech., 7
USPQ2d at 1492.
Whether CULLINAN is a surname
In support of the refusal under Section 2(e)(4), the Examining Attorney submitted
an excerpt of the first 100 listings out of 630 listings for the surname CULLINAN
Serial No. 79150636
3
found in the LexisNexis nationwide U.S. telephone database.2 In addition, the
Examining Attorney submitted the following evidence establishing use of
CULLINAN as a surname: 1) an excerpt from the website of cullinaneducation.com,
a tutoring service run by Joanne Cullinan under the name the Cullinan Education
Center;3 2) an excerpt from the website heidicullinan.com, detailing novels by author
Heidi Cullinan;4 3) an excerpt from a law firm website, sutherland.com, profiling a
lawyer named Thomas A. Cullinan;5 4) several excerpts from genealogical websites
purporting to identify the derivation of the surname Cullinan;6 5) ten excerpts from
various online publications reporting news relating to people named Cullinan;7 6)
seventeen printouts from the LexisNexis database from various newspapers reporting
news relating to people named Cullinan;8 and 7) an excerpt from the website South
Africa History Online profiling Sir Thomas Cullinan (1862-1936), who was the
founder of the Premier Mine where the Cullinan diamond, discussed infra, was
discovered.9
At least one of the news stories about people named Cullinan is a duplicate. The
LexisNexis story about Heidi Cullinan refers to the same individual whose novels are
discussed at heidicullinan.com. It also is likely that some of the Cullinans discussed
in the news stories are the same Cullinans found in the telephone database, however,

2 Office Action of August 25, 2014, p. 1.
3 Id. at 5-6.
4 Id. at 7-9.
5 Id. at 10-11.
6 Office Action of March 18, 2015, pp. 2-15.
7 Id. at 16-48.
8 Office Action of October 9, 2015, pp. 2-38.
9 Office Action of March 18, 2015, p. 55.
Serial No. 79150636
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we have only a partial listing from the database so this remains undetermined.
Nevertheless, this evidence shows that CULLINAN is indeed a surname, and that
the CULLINAN surname has been discussed in news stories.
In addition, the Examining Attorney argues that CULLINAN has no meaning
other than as a surname, and in support, submitted “negative” dictionary evidence
from merriam-webster.com, oxforddictionaries.com, macmillandictionary.com, and
collinsdictionary.com showing that the word CULLINAN does not appear in any of
those dictionaries.10
Applicant admits that CULLINAN is a surname but argues that it is not primarily
merely a surname because it is “extremely rare.”11 In support, Applicant submitted,
inter alia, evidence showing that the LexisNexis nationwide U.S. telephone database
cited by the Examining Attorney contains over 93 million listings; evidence from the
U.S. Census Bureau showing that CULLINAN does not appear in the Bureau’s
database of the 1,000 most common surnames;12 and the declaration of Aimee
Gessner, Senior Legal Counsel of the BMW Group, which includes Applicant, stating
that “nobody within BMW AG or any of its subsidiaries has the surname “Cullinan.”13
Section 2(e)(4) makes no distinction between rare and commonplace surnames.
See In re Giger, 78 USPQ2d 1405, 1408 (TTAB 2006); In re E. Martinoni Co., 189
USPQ 589, 590 (TTAB 1975) (“The fact that ‘MARTINONI’ may be a rare surname
does not entitle it to treatment different from what would be accorded to a common

10 Office Action of August 25, 2014, pp. 2-4; Office Action of March 18, 2015, pp. 49-54.
11 Applicant’s Br., p. 3; 7 TTABVUE 4.
12 Applicant’s Response of February 24, 2015, pp. 10-27.
13 Id. at 83.
Serial No. 79150636
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surname when no other meaning for the word is shown.”); Etablissements Darty, 225
USPQ at 654 (“[A]s a surname, DARTY is not so unusual that such significance would
not be recognized by a substantial number of persons.”). Thus, although rarity of a
surname may be relevant to our analysis to the extent it establishes minimal public
exposure to the name, rareness alone will not generally determine the registrability
of a mark. The test remains whether the primary significance of the term to the
purchasing public is that of a surname, based on all the evidence.
Moreover, determining whether a surname is primarily merely a surname is not
decided solely by comparing the number of listings of the surname with the total
number of listings, because given the large number of different surnames in the
United States, even the most common surname would represent only a small fraction
of the population. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004). Nor is there a
minimum number of directory listings required to establish a prima facie case for
refusal of registration. See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564,
1566 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989). Thus, the fact that the
telephone listing identifies only 630 individuals with the name Cullinan does not
mean that CULLINAN is not primarily merely a surname. Rather, we find that the
excerpts from various online publications and the news stories from the LexisNexis
database show that the public has been exposed to CULLINAN as a surname, albeit
infrequently.
Additionally, the fact that no one affiliated with Applicant is named Cullinan does
not mean that CULLINAN is not primarily merely a surname. In re Gregory, 70
Serial No. 79150636
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USPQ2d at 1795 (“[T]hat 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.”).
In the absence of any other meaning of CULLINAN, we find that the Examining
Attorney’s evidence establishes, prima facie, that CULLINAN is primarily merely a
surname.
The Cullinan diamonds
Applicant argues that the primary meaning of CULLINAN to the purchasing
public is an association with large diamonds: “[T]o the American public ‘Cullinan’ has
the meaning of the world’s largest diamonds, and the diamond mine that is the source
for these rare diamonds. The mark CULLINAN evokes the characteristics of luxury
and prestige associated with the Cullinan diamonds and diamond mine and
associates those characteristics with Applicant’s automobiles. . . .”14 In support of this
alternative meaning, Applicant has made of record evidence from a variety of sources
explaining the history of the various CULLINAN diamonds and the diamond mine:
• Petradiamonds.com – A web page from the owners of the Cullinan mine in
South Africa. The mine was previously known as the Premier mine, but was
renamed to Cullinan in 2003 (after the original founder of the mine, Sir
Thomas Cullinan15). The significance of the mine is described follows:
Cullinan is one of the world’s most celebrated diamond
mines and is the source of large, high-quality Type II gem
diamonds. It earned its place in history with the discovery
of the Cullinan diamond in 1905, the largest rough gem
diamond ever found at 3,106 carats. This iconic stone was
cut into the two most important diamonds which form part
of the Crown Jewels in the Tower of London – the First Star

14 Applicant’s Br., p. 12; 7 TTABVUE 13.
15 Office Action of March 18, 2015, p. 55.
Serial No. 79150636
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of Africa, which is mounted at the top of the Sovereign’s
Sceptre and which at 530 carats is the largest flawless cut
diamond in the world, and the Second Star of Africa, a 317
carat polished diamond which forms the centerpiece of the
Imperial State Crown.
The mine is famous for large, high-quality diamonds and
has produced just under 800 stones of greater than 100
carats, over 130 stones weighing more than 200 carats and
more than a quarter of all the world’s diamonds of greater
than 400 carats. It is also the world’s only source of truly
rare and highly valuable blue diamonds.
Notable diamonds found at the Cullinan mine since 2008
include a 507 carat white diamond named the “Cullinan
Heritage.”16
• Royal.gov.uk – The official website of the British Monarchy.
The website describes the Crown Jewels and states that the
Imperial State Crown “incorporates many famous gemstones,
including the diamond known as the Second Star of Africa (the
second largest stone cut from the celebrated Cullinan
diamond.” The website also describes the Sovereign’s Sceptre:
“The sceptre contains the Cullinan I diamond. At just over 530
carats, Cullinan I is the largest top-quality cut diamond in the
world.”17
• Tables from the United Kingdom Office of National Statistics
showing that nearly 3 million U.S. residents travel to the
United Kingdom each year.18
• A Wikipedia entry on “Tourism in the United Kingdom”
stating that the Tower of London—which houses the Crown
Jewels—is the most popular tourist destination in the United
Kingdom.19
• Excerpts from the website of the Smithsonian Museum of
Natural History describing an exhibition of jewels, including
the “Cullinan Blue Diamond Necklace.” The articles discuss
other famous jewels such as the “Tiffany Diamond;” the “Hope
Diamond,” named after Lord Henry Philip Hope; and the

16 Applicant’s Response of February 24, 2015, p. 36.
17 Id. at 39.
18 Applicant’s Response of September 18, 2015, pp. 78-83.
19 Id. at 85-86.
Serial No. 79150636
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Carmen Lucia Ruby,” named after the wife of the jewel’s
donor.20
• An article from nbcnews.com describing the discovery of a 232
carat rough diamond at the Cullinan mine in 2014.21
• Articles from cnn.com and forbes.com describing the cutting
and polishing of the “Cullinan Heritage,” the 507 carat rough
diamond found at the Cullinan mine in 2009.22
• People.com – the website of People magazine describing Queen
Elizabeth’s Imperial State Crown: “Nestled in the ‘brow’ of the
crown—just below the breathtaking Black Prince’s Ruby set
in the central panel—is the huge Cullinan Diamond, which
was found in Africa in 1905, weighing 3,601 carats. . . . The
stone was later cut into several pieces, with the ‘Cullinan II’
earning a spot on the Imperial State Crown. . . .”23
• An article from BloombergBusiness on the gemstone business
and noting that the “largest mined diamond is the 3,106 carat
Cullinan stone, found in South Africa and set into Britain’s
Crown Jewels.”24
• An article from abcnews.go.com on the threat of hackers and
describing the fictional theft of “the world’s largest polished
diamond, the Cullinan I.”25
Applicant argues that these examples of coverage of the Cullinan diamond, the
other diamonds found at the Cullinan mine, and the Cullinan mine itself establish
that CULLINAN “has a meaning other than that of a surname, and weighs against a
finding that the trademark is primarily merely a surname.”26 We disagree.

20 Id. at 17-20.
21 Applicant’s Response of September 18, 2015, pp. 22.
22 Id. at 28-76.
23 Id. at 88-90.
24 Id. at 94-96.
25 Id. at 98.
26 Applicant’s Br., p. 12. 7 TTABVUE 13.
Serial No. 79150636
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Regarding the excerpt from Petradiamonds.com, it is not clear from the record
whether prospective consumers in the United States are familiar with this web site
or the diamond mine, which is located in South Africa. Further, given that the mine
was named the “Premier” mine for its first 100 years, and only re-named Cullinan
mine in 2003, it also is not clear whether prospective consumers would associate the
Cullinan mine with “the characteristics of luxury and prestige,” as Applicant
suggests.
Regarding the number of American tourists visiting the United Kingdom, the fact
that nearly 3 million Americans may travel annually to the United Kingdom—even
assuming many view the crown jewels—does not mean that these visitors will view
CULLINAN as anything more than the surname of the individual who discovered the
Cullinan diamond. On the contrary, these tourists are as likely to view CULLINAN
as a surname inasmuch as the identity of Sir Thomas Cullinan, the founder of the
Premier mine, is intertwined with the history of the Cullinan diamonds.
Neither do the remainder of the articles establish that the meaning of
CULLINAN, as a reference to diamonds and the diamond mine, has supplanted the
significance of CULLINAN as a surname. In nearly all of the articles, CULLINAN is
followed by one or more nouns describing a diamond or the mine. For example, the
terms “Cullinan Diamond,” the “Cullinan Blue Diamond Necklace,” the “Cullinan
stone,” and the “Cullinan mine” all “represent the normal naming of a place or other
item after an individual.” In re Harris-Inter-type Corp., 518 F.2d 629, 186 USPQ 238,
239-40 (CCPA 1975) (“It is also significant that, except for the name of a ‘city,’ the
Serial No. 79150636
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word ‘Harris’ is coupled with the place or thing so named.”). Moreover, the excerpts
from the website of the Smithsonian Museum of Natural History reinforce the likely
consumer perception that jewels may be named after people because these excerpts
describe three other famous jewels named after individuals: the “Tiffany Diamond,”
the “Hope Diamond,” and the “Carmen Lucia Ruby.”
Whether the mark has the “structure and pronunciation” of a surname
Lastly, we consider whether CULLINAN has the “structure and pronunciation” of
a surname. The Examining Attorney argues that CULLINAN “has the ‘look and feel’
of a surname due to its shared origin and history with—and the resulting visual and
phonetic resemblance to—other common, well-known surnames” such as “Cullen”
and “Culligan.”27 The determination of whether CULLINAN has the “structure and
pronunciation” of a surname is subjective in nature. Nevertheless, we do not find the
evidence on this point to be particularly helpful. CULLINAN doesn’t share the same
“structure and pronunciation” as “Cullen” inasmuch as they have different ending
vowels and have two versus three syllables. CULLINAN is more similar in “structure
and pronunciation” to “Culligan” but the evidence that “Culligan” is a surname does
not establish that a significant portion of United States consumers are familiar with
the surname. Based on the paucity of evidence, combined with the subjective nature
of this factor, we are unable to make a definitive determination whether Applicant’s
mark has the “structure and pronunciation” of a surname.

27 Examining Attorney’s Br., p. 5; 9 TTABVUE 6.
Serial No. 79150636
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Balancing the evidence of record, we find that the Examining Attorney has
demonstrated that CULLINAN is primarily merely a surname that is in use and
recognized in the United States and that Applicant has failed to demonstrate another
meaning of the term as perceived by a meaningful proportion of the consuming public.
Accordingly, the refusal to register the mark because it is primarily merely a surname
must be affirmed.
Decision: The refusal to register Applicant’s mark CULLINAN under Section
2(e)(4) of the Trademark Act is affirmed.