Curlin Medical Inc.

Trademark Trial and Appeal Board

Feb 11, 2008

No. 78560314 (T.T.A.B. Feb. 11, 2008)

Mailed:
February 11, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Curlin Medical Inc.
________

Serial No. 78560314
_______

George L. Snyder, Jr. of Hodgson Russ LLP for Curlin
Medical Inc.

Matt Einstein, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).1
_______

Before Seeherman, Hairston and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Curlin Medical Inc. (applicant) has applied to
register the mark CURLIN in standard characters for
“computer software for use by medical professionals for
ensuring proper medication delivery, remote monitoring of
the infusion process, facilitating infusion pump
programming, and facilitating billing, management, and

1 A different examining attorney was responsible for this
application prior to the filing of the appeal brief.

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78560314
2
archival storage of client and clinic information” in
International Class 9 and “medical apparatus for
introducing pharmaceutical preparations into the human
body, namely, medical infusion pumps; administration sets
consisting primarily of infusion equipment, namely, tubing,
luer locks, luer lock caps, bag spikes, Y-sites, check
valves, filters, and reservoirs” in International Class 10.2
The Examining Attorney has finally refused
registration under Trademark Act Section 2(e)(4), 15 U.S.C.
§ 1052(e)(4), on the ground that CURLIN is primarily merely
a surname. Applicant appealed. Applicant and the
Examining Attorney have filed briefs. We reverse.
Trademark Act Section 2(e)(4) precludes registration
of a mark which is “primarily merely a surname” on the
Principal Register without a showing of acquired
distinctiveness under Trademark Act § 2(f), 15 U.S.C.
§ 1052(f). We must decide on the unique facts of each case
whether the public would perceive the mark at issue as
“primarily merely a surname.” In re Etablissements Darty
et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985).

2 Application Serial No. 78560314, filed February 3, 2005,
asserting a bona intention to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. § 1051(b), as the basis for
the application in both classes.

Serial No. 78560314
3
The Examining Attorney bears the initial burden to make a
prima facie showing of surname significance. Id. If the
Examining Attorney makes that showing, then we must weigh
all of the evidence to determine ultimately whether the
mark is primarily merely a surname. In re Sava Research
Corp., 32 USPQ2d 1380, 1381 (TTAB 1994). If there is any
doubt, we must resolve the doubt in favor of applicant. In
re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB
1995).
In Benthin, the Board identified five factors, four of
which are relevant here, to consider in determining whether
a mark is primarily merely a surname: (1) the degree of
the surname’s “rareness,” (2) whether anyone associated
with applicant has the mark as a surname, (3) whether the
mark has any recognized meaning other than as a surname,
and (4) whether the mark has the “look and feel” of a
surname. Id. at 1332-33. Because applicant’s mark in this
case is in standard characters, we need not consider the
fifth factor, that is, whether, because of the display of
the mark, it will not be perceived as a surname.
Rareness – The record establishes and the Examining
Attorney concedes that CURLIN is a rare surname. With the
first office action in the case, the Examining Attorney
provided the results of a search in the NEXIS USFIND
Serial No. 78560314
4
database showing 286 records for the CURLIN surname.
Applicant provided the NEXIS description of the USFIND
database with its response to that action. It states,
“USFIND Person Locator – Nationwide (USFIND file includes
123 million consumer records and more than 11 million
business records).” Appendix A to Applicant’s January 6,
2006 Response. Applicant notes, and we have confirmed,
that the listing includes many obvious duplicate references
to the same person. See, for example, listings 16 and 17.
The Examining Attorney also provided the results of a
search for “CURLIN” at rhymezone.com stating, “name: A
surname (very rare: popularity rank in the U.S.:
#20304).” In the final refusal in the case the Examining
Attorney refers to CURLIN as “a relatively rare surname.”
Final Office Action at 2. Cf. In re Joint-Stock Co.
“Baik”, 84 USPQ2d 1921, 1923 (TTAB 2007) (“Baik” held to
be “extremely rare” surname based on 456 examples of “Baik”
surname in comprehensive directory of the entire United
States).
The Examining Attorney also made of record excerpts
from 37 articles from the NEXIS: NEWS-ALL database showing
references to persons with CURLIN as a surname in various
news articles. See attachments to Final Office Action and
Denial of Reconsideration. The majority of the excerpts
Serial No. 78560314
5
attached to the final Office action are very brief and
provide limited context. Neither these excerpts, nor those
somewhat longer excerpts attached to the denial of the
request for reconsideration, show references to any
individual of particular note with the CURLIN surname such
that the public would be conditioned to recognize this rare
surname as a surname. In re Gregory, 70 USPQ2d 1792, 1795
(TTAB 2004) (ROGAN, though rare surname, held primarily
merely a surname due to media attention and publicity
regarding individuals with ROGAN surname). Many of the
references here include persons with CURLIN as a surname in
listings of many individuals. In the articles where there
is some discussion of a person with the CURLIN surname
there is no evidence of any person who has been the subject
of media attention or publicity to the extent that the
public perception of CURLIN would be affected.
Consequently, we conclude that this evidence fails to
establish that this rare surname would nonetheless be
recognized as a surname due to the public’s exposure to its
usage as a surname.
Accordingly, we conclude that CURLIN is a rare
surname.
Applicant’s Use – Applicant has stated that no one
associated with applicant has CURLIN as a surname, and the
Serial No. 78560314
6
Examining Attorney does not dispute this fact.
Accordingly, for the purposes of our consideration of this
case we assume that no one associated with applicant has
CURLIN as a surname.
Other Meanings – The Examining Attorney argues that
CURLIN has no significant meaning other than as a surname.
To support this conclusion the Examining Attorney made of
record the results of searches in five medical and other
online dictionaries indicating no “other meaning” for
CURLIN. Applicant, on the other hand, argues that CURLIN
has several “other meanings.”
In this connection, applicant first explains that
CURLIN is a coined term derived from the term
“curvilinear.” Applicant explains, “The record sets forth
that CURLIN is (sic) shortened form of the word curvilinear
(CURviLINear) which relates to the curved arrangement of
the tubing in the pumping mechanism of Applicant’s
peristaltic infusion pumps.” Applicant’s Brief at 10.
Applicant also provides copies of four fact sheets related
to different models of its infusion pump system. Appendix
B to Applicant’s Response of January 12, 2006. In each of
the four examples the first item listed at the top right of
each page under “Specifications” is “Pumping Mechanism”
followed by “Curvilinear Peristaltic Pumping Action.” The
Serial No. 78560314
7
display of this text is quite prominent and in close
proximity to use of the CURLIN mark.
The Examining Attorney discounts this explanation and
evidence regarding the “meaning” of CURLIN because CURLIN
was not disclosed in the dictionary searches. We find
applicant’s explanation regarding the derivation of the
mark highly relevant to both the “other-meaning” factor as
well as the “look-and-feel” factor.
Of course, it is not at all surprising that one would
not find CURLIN, a coined term which applicant claims as
its trademark, in medical or other dictionaries. However,
the “meaning,” or more accurately the derivation, of the
term is highly relevant to the ultimate question - How will
relevant consumers perceive CURLIN? In re Etablissements
Darty et Fils, 225 USPQ at 653. This evidence indicates
that relevant purchasers, medical professionals, are likely
to perceive CURLIN as a coined term, that is, as a
corrupted version of “curvilinear” used by applicant as its
trademark. Cf. In re Petrin Corp., 231 USPQ 902, 903 (TTAB
1986) (arguments regarding derivation of coined term
rejected in the absence of evidence showing applicant’s use
of coined term with terms from which it was derived). The
explanation and evidence regarding the derivation of CURLIN
also indicate that relevant consumers are unlikely to
Serial No. 78560314
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perceive this rare surname as a surname in the context in
which it is being used, that is, as applied to the specific
medical equipment and software identified in the
application. In re BDH Two Inc., 26 USPQ2d 1556 (TTAB
1993) (GRAINGERS used in connection with “crackers and
snack chips, namely corn chips, tortilla chips, wheat chips
and chips made from one or more processed cereal grains”
held not primarily merely a surname).
Applicant also argues that CURLIN has additional
“other meanings” which should serve to remove it from
classification as “primarily merely a surname.” Applicant
provides evidence that “curlin” is used in the field of
microbiology as the name of a protein associated with
Sudden Infant Death Syndrome (SIDS). See attachments to
Applicant’s Request for Reconsideration. The Examining
Attorney discounts the importance of this use because it is
confined to the field of microbiology and would be known
only to those knowledgeable in the field. The Examining
Attorney’s point is well taken. However, in the end, we
need not and do not rely on this usage to reach any
conclusions here.
Applicant also submitted evidence after a remand to
show that CURLIN is the name of a racehorse. Among other
things, this evidence shows that “Curlin” won the 2007
Serial No. 78560314
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Preakness Stakes and was the runner up in the Belmont
Stakes. The Examining Attorney countered with evidence
that the racehorse was named after an individual, Charles
Curlin, a former slave who fought for the confederacy in
the Civil War, who was a relative of one of the horse’s
owners. See Examining Attorney’s Supplemental Statement
Following Remand with Attachments.
In the end, this evidence is not particularly relevant
to or probative of how relevant purchasers, medical
professionals, will perceive CURLIN when it is used in
connection with the applicant’s goods. The explanation and
evidence regarding the derivation of the mark is of
overriding importance in this context, the context which
really matters here. Even when we consider the evidence
regarding Curlin, the racehorse, in the broader context, on
balance, it still weighs in applicant’s favor. On the one
hand, it is evident that a significant segment of the
general public may have noted the accomplishments of
Curlin, the racehorse, in the media. On the other hand, it
is unlikely that the rather obscure facts regarding the
derivation of the horse’s name would greatly affect the
public perception of CURLIN. Again, we find the
explanation and evidence regarding the derivation of the
Serial No. 78560314
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mark and its impact on relevant purchasers of the
identified goods to be far more significant.
Accordingly, we conclude that the most significant
“other meaning” associated with CURLIN is its derivation
from the word “curvilinear” and its indirect or suggestive
reference to the “curvilinear peristaltic pumping action”
of the identified goods. This “other meaning” indicates
that CURLIN would not be perceived as a surname as applied
to the identified goods.
Look and Feel – Finally we consider whether CURLIN has
the “look and feel” of a surname. The Examining Attorney
argues that because it is a two-syllable term and because
it shares the “lin” ending with two-syllable surnames, such
as, Coughlin, Conklin, Hamlin and Timlin, CURLIN has the
look and feel of a surname. Applicant, on the other hand,
argues that the same “structure” also fits in the case of
certain common nouns and place names, such as, poplin,
gremlin and Kremlin. Applicant argues further that “in” is
a widely used shortened form of “ing,” a common word
ending, and therefore, that people may perceive the mark as
a shortened form of “curling.”
Without endorsing the theories applicant advances
here, we nonetheless conclude that CURLIN, in this context,
does not have the look and feel of a surname. We find the
Serial No. 78560314
11
Examining Attorney’s argument regarding the “structure” of
CURLIN relative to certain known surnames far less
compelling on these facts than in other cases where the
Board has found that the mark has the look and feel of a
surname. See, e.g., In re Industrie Pirelli Societa per
Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) (PIRELLI held
primarily merely a surname).
Accordingly, we conclude that CURLIN does not have the
look and feel of a surname.
Finally, after considering all of the relevant factors
identified in Benthin, we conclude that the Examining
Attorney has failed to establish a prima facie case that
CURLIN is primarily merely a surname. In re Joint-Stock
Co. “Baik”, 84 USPQ2d at 1924. Furthermore, even if we
were to conclude that the Examining Attorney had
established a prima facie case here, applicant has
presented sufficient evidence to rebut the prima facie
case.
Decision: We reverse the refusal to register the mark
under Trademark Act Section 2(e)(4).
_______

Seeherman, Administrative Trademark Judge, concurring:
Serial No. 78560314
12
I concur with the decision of the majority, and with
much of the analysis. I add this concurring opinion to
reiterate the point that I made in my concurring opinion in
In re Joint-Stock Co. “Baik”, 84 USPQ2d 1921 (TTAB 2007),
as to how the “look and feel” factor should be interpreted
in assessing whether a mark is primarily merely a surname.
As I said in Baik, if a term does not have the “look and
feel” of a surname it should not be refused registration
even if there is evidence to show that it is, in fact, a
surname, but in the converse situation, registration should
not be refused simply because the mark at issue is similar
in sound or appearance to other surnames. The Examining
Attorney’s arguments in the present case with regard to the
“look and feel” factor--that CURLIN has the same “lin”
ending as two-syllable surnames such as Coughlin, Conklin
and Hamlin--illustrates the problem with using this factor
to show that a term has surname significance. Curlin is
very different from Coughlin, Conklin and Hamlin, as
different as are the ordinary words “poplin” and “gremlin”
noted by applicant. We can reach absurd results if we base
our analysis on whether certain syllables or letter chains
can be found in the applied-for mark and in various
surnames. As I said in Baik, interpreting the “look and
feel” factor to refuse registration of marks simply because
Serial No. 78560314
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they are similar to recognized surnames does not serve the
intention of the statute, which is to keep surnames
available for use by those with that surname. See
Kimberly-Clark Corp. v. Marball, Comr. Pats., 94 F.Supp
254, 88 USPQ 277, 279 (D.D.C. 1950) (“The spirit and the
intent of the entire Act indicate that Congress intended to
codify the law of unfair competition in regard to the use
of personal names as it has been developed by the courts. …
At common law it was held that every man had an absolute
right to use his own name.”).
As an additional point, in this case CURLIN is such a
rare surname that I believe that fact alone is a sufficient
basis on which to conclude that it is not primarily merely
a surname. During the hearings on the bills that
eventually became the Lanham Act, the testimony shows that
Congress was not trying to prevent the registration of
surnames per se; one witness pointed out that “almost every
word you can think of is somebody’s surname, somewhere” and
to refuse the registration of a term because “it falls into
the general category that there might be a surname
somewhere of that kind, that somebody somewhere may bear
that name, it merely limits the field of choice.” Hearings
Serial No. 78560314
14
on H.R. 4744 Before the Subcomm. Trade-Marks of the House
Comm. on Patents, 76th Cong., 1st Sess. (1939) at 40.3
If a surname is extremely rare, there are very few, if
any, people who can possibly be affected by the
registration of that surname. This is because not only
must there be a person with that surname, but that person
must want to use his or her surname for the same or related
goods or services as those of the trademark applicant.
Accordingly, if the Examining Attorney cannot show that a
reasonable number of people have a particular surname, in
my view the Office cannot meet its burden of prima facie
showing that a mark is primarily merely a surname.4
That is the situation in the present case. The
Examining Attorney was able to find only 286 records for
the surname CURLIN in a search of a national database, and
even that number reflects several duplications. Thus, the
number of people with the surname CURLIN is so small that

3 Congress also intended that surnames which have other meanings
should be registrable.
4 Many surname cases were decided prior to the availability of
computer databases showing surname listings for everyone in the
United States, and therefore there was some uncertainty, based on
evidence from a limited number of print telephone directories,
about how rare a surname might be. As a result, the Board and
the Courts often looked to factors other than the rareness of the
surname to support a finding that a term was not primarily merely
a surname. I suggest that, with the availability of these
computer databases, we can determine whether a term is truly a
rare surname, and if a term is sufficiently rare, we should find
it registrable regardless of the evidence on the other factors.
Serial No. 78560314
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the purpose of the statute prohibiting the registration of
marks which are primarily merely surnames would not be
served by refusing registration in this case.