Gene Simmons Comics Group

Trademark Trial and Appeal Board

Sep 19, 2008

No. 78905279 (T.T.A.B. Sep. 19, 2008)

Mailed: September 19, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gene Simmons Comics Group
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Serial No. 78905279
_______

Peter J. Vranum of Janvey, Gordon, Herlands, Randolph & Cox LLP
for Gene Simmons Comics Group.

Aretha Somerville, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney).
_______

Before Walters, Holtzman and Zervas, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Gene Simmons Comics Group
to register the mark SIMMONS COMICS GROUP (in standard character
form) for "comic books" in Class 16.1 "COMICS GROUP" is
disclaimed.
The trademark examining attorney has refused registration
on the ground that the mark is primarily merely a surname under

1 Application Serial No. 78905279, filed June 9, 2006, based on an
allegation of a bona fide intention to use the mark in commerce.
Applicant has claimed ownership of Registration Nos. 2738269, 2762627
and 2983582.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Serial No. 78905279
2
Section 2(e)(4) of the Trademark Act. When the refusal was made
final, applicant appealed.
Both applicant and the examining attorney have filed
briefs.
A term is primarily merely a surname if, when viewed in
relation to the goods or services for which registration is
sought, its primary significance to the purchasing public is
that of a surname. See In re United Distillers plc, 56 USPQ2d
1220 (TTAB 2000). Among the factors to be considered in
determining whether a term is primarily merely a surname are (1)
the degree of a surname's rareness; (2) whether anyone connected
with applicant has that surname; (3) whether the term has any
recognized meaning other than that of a surname; and (4) whether
the term has the "look and sound" of a surname. See United
Distillers, supra at 1221.
As to the first factor, the degree of rareness, the
examining attorney has submitted printouts from the website,
whitepages.com, indicating that there are 300 listings for the
name "Simmons," along with several pages of individual listings.
In addition, we take judicial notice of information from the
United States Census Bureau, showing that "Simmons" ranks 92nd in
Serial No. 78905279
3
frequency out of nearly 89,000 surnames.2 The evidence shows
that SIMMONS is not at all rare, but instead is a very common
surname.
As to the second factor, applicant states that Gene Simmons
is the name of the principal and sole shareholder of applicant.
The fact that "Simmons" is the name of someone associated with
applicant further indicates that the term will be perceived as a
surname.
The third factor is whether the term has another recognized
meaning. There is no evidence that the term has a meaning in
ordinary language other than as a surname. Nonetheless,
applicant maintains that the term has another recognized
meaning. Applicant argues that Gene Simmons is "a very well
known celebrity"; that he is "the world famous bass player for
the musical group KISS"; and that he was one of the founders of
the group and has been the bass player for the group since 1973.
Applicant contends that the mark will not be perceived primarily
merely as a surname "because of the mark's association with Gene
Simmons,...and the other SIMMONS trademarks owned by Applicant."
Applicant states that it the owner of the following
registrations, all of which are for comic books and other
printed matter in Class 16: Registration No. 2983582 for the

2 Census 1990 (www.census.gov/genealogy/names). The Board may take
judicial notice of census data. See In re Spirits International N.V.,
86 USPQ2d 1078 (TTAB 2008).
Serial No. 78905279
4
mark SIMMONS BOOKS (and design) ("Books" disclaimed);
Registration No. 2762627 for the mark GENE SIMMONS TONGUE (and
design); and Registration No. 2738269 for the mark GENE SIMMONS
TONGUE.3
To support its position, applicant has submitted TESS
printouts of its prior registrations and an entry for "Gene
Simmons" from the website, wikipedia.org. The entry includes
biographical information about Mr. Simmons and his association
with the band, Kiss; his roles in several movies; his television
background and exposure, including, as applicant points out, his
appearance in the A&E reality TV show, "Gene Simmons Family
Jewels"; a listing of several albums Mr. Simmons produced for
other bands; and listings of his five CD releases and three
DVDs.4
The Court in In Lucien Piccard Watch Corp. v. Since 1868
Crescent Corp., 314 F.Supp. 329, 165 USPQ 459, 461 (SDNY 1970)
stated that "names of historical characters or noted persons are
registrable, provided the primary connotation of the mark is of

3 Applicant also states that it is the owner of several pending
applications for marks comprising SIMMONS or GENE SIMMONS. However,
pending applications are of no probative value other than as evidence
that they were filed on a certain date.

4 Applicant has relied on additional evidence which was submitted for
the first time with applicant's reply brief. With the exception of
the dictionary definition of "group," which is appropriate for
judicial notice, this evidence is untimely and has not been
considered. See Trademark Rule 2.142(d). Nor have we considered any
arguments relating to this late-filed evidence.
Serial No. 78905279
5
the historical character." As discussed in In re Pickett Hotel
Company, 229 USPQ 760, 761 (TTAB 1986) "decisions concerning
historical names draw a line between names which are so widely
recognized that they are almost exclusively associated in terms
of their commercial impressions with the historical figures, and
names which are semihistorical in character." (Italics added.)
The evidence in this case is insufficient to demonstrate
that the term SIMMONS would be "almost exclusively" associated
with Gene Simmons, rather than merely as a surname of any
individual identified by that name. SIMMONS is a very common
surname. It clearly does not point specifically to Gene
Simmons. Furthermore, to the extent the evidence shows that
Gene Simmons is well known, his renown is primarily in relation
to the musical group, Kiss. There is no evidence that the
surname SIMMONS would be recognized by purchasers as identifying
Gene Simmons in the completely different and unrelated context
of comic books. In this regard, we point out that applicant's
registrations for comic books are not proof of any exposure of
the registered marks to the purchasing public; nor do they
demonstrate that anyone associates the name SIMMONS for comic
books with Gene Simmons.5

5 Applicant's argument that the mark identifies the source of goods "in
the same manner as the Applicant's other SIMMONS marks" is not well
taken. Applicant's registrations for the full name, GENE SIMMONS, are
not relevant to a determination of whether SIMMONS in itself is
registrable. Furthermore, unlike the mark in the present case, the
Serial No. 78905279
6
In any event, applicant's evidence is not sufficient to
show that Gene Simmons is an historical or noted figure of such
magnitude that like the designations DA VINCI, SOUSA, and M.C.
ESCHER, the designation SIMMONS primarily would be viewed by
purchasers as a reference to a particular, renowned historical
figure, rather than for its significance as a surname. Thus,
this case is distinguishable from the cases which involved the
names of those famous historical figures. See In re Pyro-
Spectaculars, Inc., 63 USPQ2d 2022 (TTAB 2002) (SOUSA); Michael
S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132 (TTAB 2000)
(M.C. ESCHER); and Lucien Piccard Watch, supra (S.D.N.Y. 1970)
(DA VINCI).
Finally, as to the fourth factor, we find that SIMMONS has
the "look and feel" of a surname. We believe that by its
nature, SIMMONS, as a common surname, with no other known
significance, gives the impression of being a surname. See Ex
parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm'r Pats. 1955)
("There are some names which by their very nature have only a
surname significance.... 'Seidenberg'... would be in this
class.")
When we view the term SIMMONS under the factors set out in
United Distillers, we find that SIMMONS would be perceived

mark in applicant's prior registration for SIMMONS also includes
significant design elements, which would of course overcome the
perception of the mark as primarily merely a surname.
Serial No. 78905279
7
primarily as a surname. However, as applicant points out, the
mark is not SIMMONS, alone, but SIMMONS COMICS GROUP and we must
consider the mark SIMMONS COMICS GROUP as a whole. See In re
Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492
(Fed. Cir. 1988).
The examining attorney maintains that the term COMICS GROUP
does not overcome the primary surname significance of the mark
SIMMONS COMICS GROUP, but instead merely reinforces it. She
argues that the term COMICS is generic for applicant's goods,
comic books, and that the term GROUP is a generic term
indicating the entity of the applicant. The examining attorney
has submitted various dictionary definitions of "group"
including the following:
noun 1. any collection or assemblage of persons or things;
cluster; aggregation: a group of protesters; a remarkable
group of paintings.
Dictionary.com Unabridged (v 1.01)

Applicant, on the other hand, argues that while COMICS is
admittedly descriptive of applicant's goods, the term GROUP is
descriptive "only of the Applicant and not of the goods."
(Brief, p. 3.) In its reply brief, applicant takes the
position that the term GROUP "suggests but does not merely
describe applicant." (Reply Brief, p. 1.) Applicant further
argues that GROUP does not pertain to a collection of comics;
that comics are published in a series; and that, furthermore,
Serial No. 78905279
8
applicant is a company and not a "group." Applicant has
attached a definition of "group" from Merriam-Webster Online
dictionary defining "group" arguing that none of the definitions
include a company or comics publisher.
The addition of a generic or merely descriptive term to a
surname does not preclude its surname significance if, when
considered as a whole, the primary significance of the mark to
the purchasing public is that of a surname. See Hutchinson
Technology, supra; In re Hamilton Pharmaceuticals Ltd., 27
USPQ2d 1939, 1940 (TTAB 1993); and In re E. Martinoni Company,
189 USPQ 589, 590 (TTAB 1975) citing In re Louis De Markus
Corporation, 136 USPQ 677, 677 (TTAB 1963) (DUFFEY PROCESS is
primarily merely a surname; "the descriptive word 'process' adds
nothing to registrability of 'Duffey Process'").
In addition to the definitions supplied by the examining
attorney, we take judicial notice that "group" is also defined
as follows: "a commercial organization consisting of several
companies under common ownership."6 The New Oxford American
Dictionary (Second Edition 2005). We also take judicial notice
of the definition of "comic" as meaning, "noun "[1b.] A comic

6 The Board may take judicial notice of dictionaries and other standard
reference works. See University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983);
Serial No. 78905279
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book." The American Heritage Dictionary of the English Language
(Fourth Edition 2000).
It is clear the term COMICS in applicant's mark is generic
for applicant's goods, "comic books." The dictionary evidence
also shows that GROUP, in the context of the phrase COMICS
GROUP, refers to either a comic book collection or the type of
entity from which the comic books originate, that is, the entity
that publishes or sells the comic books. Either way, the phrase
is of little source indicating significance. See, e.g., In re
I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265, 267 (CCPA
1953) (S. SEIDENBERG & CO'S. primarily merely a surname; "the
addition of the expression '& Co's.,'...cannot be held to
distinguish or relate to anything except the surname
'Seidenberg.'"); and In re The Paint Products Co., 8 USPQ2d
1863, 1865-66 (TTAB 1988) (PAINT PRODUCTS CO. unregistrable
"for goods emanating from a company that sells paint products";
noting that marks consisting of generic or highly descriptive
terms coupled with entity designations such as "Inc." and
"company" have been held unregistrable.)
We find that the addition of the highly descriptive, if not
generic, term COMICS GROUP to SIMMONS, does nothing to overcome
the surname meaning of the mark SIMMONS COMICS GROUP as a whole.
There is nothing in the record to show, as applicant claims,
that the meaning of the word GROUP as a "collection" would not
Serial No. 78905279
10
pertain to comic books. Further, the fact that the true nature
of applicant's entity may be a "company" rather than a "group"
is not significant. The question is how the mark will be
perceived by the public, and the public would expect, upon
encountering SIMMONS COMICS GROUP on comic books, that the
phrase COMICS GROUP would have its ordinary dictionary meanings.
In view of the foregoing, we find that SIMMONS COMICS
GROUP, as a whole, would be viewed as primarily merely a
surname.7
Decision: The refusal to register under Section 2(e)(4) of
the Trademark Act is affirmed.

7 We note applicant's comment on the last page of its reply brief:

The consuming public has come to associate goods emanating under
the SIMMONS name,... with Applicant Gene Simmons. It is clear
that due to the Applicant's long and extensive use and promotion
of the term SIMMONS in connection with his various activities,
products and services the term has acquired distinctiveness with
respect to the Applicant and his goods. Such acquired
distinctiveness is transferred to the instant mark. ... The mark
considered in its entirety including the term GROUP combined with
the secondary meaning of the term SIMMONS and its association with
the celebrity, Gene Simmons, is sufficient to overcome any
purported surname significance of the term SIMMONS"

Applicant has never requested registration of the mark under Section
2(f) and to the extent that applicant is attempting, in the
alternative, to do so for the first time in its reply brief, the
request is untimely. See Trademark Rule 2.142(d); and TBMP §1215 (2d
ed. rev. 2004). After an appeal is filed, the proper procedure, if an
applicant wishes to assert a claim of acquired distinctiveness in the
alternative, is to file a request for remand in a separate document,
rather than as a statement in its reply brief. See TBMP §1215.