Gibson Piano Ventures, Inc.

Trademark Trial and Appeal Board

Jun 17, 2004

No. 76409771 (T.T.A.B. Jun. 17, 2004)

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Gibson Piano Ventures, Inc.
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Serial No. 76409771
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Martha B. Allard of Waddey & Patterson for Gibson Piano
Ventures, Inc.
Mary Boagni, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
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Before Hanak, Walters and Chapmann, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Gibson Piano Ventures, Inc. (applicant) seeks to
register in typed drawing form MEHLIN & SONS for pianos.
The intent-to-use application was filed on May 20, 2002.
Citing Trademark Act Section 2(e)(4) the Examining
Attorney has refused registration because applicant’s mark
is primarily merely a surname. When the refusal to
register was made final, applicant appealed to this Board.
Applicant and the Examining Attorney filed briefs.
Applicant did not request a hearing.
To begin with, we note that there is no dispute that
Mehlin is a surname, and applicant does not contend to the
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
6/17/2004
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contrary. In this regard, reference is made to page 2 of
applicant’s brief where applicant states that “the issue is
whether the additional terms combined with the surname
[Mehlin] are capable of functioning as a mark.” Moreover,
during the examination process, the Examining Attorney
conducted a NEXIS search for “Mehlin.” The preface to this
search revealed that there were 339 stories which contained
“Mehlin.” The Examining Attorney made of record the text
of 41 of these 339 stories. These 41 stories clearly use
Mehlin as a surname. One story appeared in the Omaha World
Herald of March 12, 2003 and it reads, in part, as follows:
“No bullets or bullet holes were found outside the range,
which was closed July 15, said Police Chief Keith Mehlin.”
Applicant has not argued that the 41 stories made of record
are not representative of the remaining 298 stories. That
is to say, there is no suggestion that in any of these 298
stories Mehlin is used other than as a surname.
As previously noted, applicant has conceded that
Mehlin is a surname. However, it is the contention of
applicant “that the mark MEHLIN & SONS [taken in its
entirety] should not be deemed primarily merely a surname
for two reasons. First, the additional terms ‘& Sons’
combined with the term ‘MEHLIN’ is capable of functioning
as a mark, such that the mark should not be considered
Ser. No. 76409771
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primarily merely a surname under Section 2(e)(4). Second,
the term has some historical significance, i.e., it
identifies a historical person in the vintage piano
industry, such that the surname is not primarily merely a
surname.” (Applicant’s brief page 2).
Considering applicant’s first argument, we are
somewhat perplexed by applicant’s statement that its mark
MEHLIN & SONS “is capable of functioning as a trademark.”
(Applicant’s brief page 2). There is no evidence that
applicant has made use of its mark. Thus, applicant cannot
show that MEHLIN & SONS has acquired a secondary meaning
such that it is no longer primarily merely a surname. See
Section 2(f) of the Trademark Act. Instead, we will
interpret applicant’s first argument as being that MEHLIN &
SONS is inherently (i.e. from the very beginning) not
primarily merely a surname. In other words, it is our
understanding that applicant is arguing that the addition
of & SONS to the surname MEHLIN causes applicant’s mark in
its entirety to be not primarily merely a surname.
The leading case concerning whether the addition to a
surname of words (or abbreviations) indicating the business
structure of applicant results in a composite mark which is
not primarily merely a surname is In re I. Lewis Cigar Mfg.
Co., 205 F.2d 204, 98 USPQ 265 (CCPA 1953). There a
Ser. No. 76409771
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predecessor Court to our primary reviewing Court held that
the “mark” S. SEIDENBERG & CO’S for cigars was primarily
merely a surname despite the fact that the “mark” in its
entirety concluded with the wording & CO’S. The wording &
CO’S like the wording & SONS merely indicates the legal
nature of the business, and does not convert either
SEIDENBERG or MEHLIN into something other than primarily
merely a surname. Indeed, the present “mark” MEHLIN &
SONS, if anything, is more likely to retain its status as
primarily merely a surname. In the Lewis Cigar case the
mark in question featured additional verbiage, namely, the
letter “S” preceding the “mark” S. SEIDENBERG & CO’S.
Here, there is no initial or other wording proceeding
MEHLIN & SONS.
More recently, our primary reviewing Court held that
DARTY was primarily merely a surname. In so doing, the
Court noted that DARTY “is used in the company name in a
manner which reveals its surname significance, at least to
those with a modicum of familiarity with the French
language (Darty et Fils translates as Darty and Son).” In
re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652,
653 (Fed. Cir. 1985).
Ser. No. 76409771
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In short, we find that the addition of & SONS to the
surname Mehlin does not result in a “mark” (MEHLIN & SONS)
which is other than primarily merely a surname.
We turn now to applicant’s second argument as to why
its “mark” is not primarily merely a surname, namely that
it “has some historical significance, i.e., it identifies a
historical person in the vintage piano industry.”
(Applicant’s brief page 2). To begin with, in an effort to
establish that a purported person by the name of Paul G.
Mehlin produced pianos in this country in the 1800’s,
applicant improperly attached to its brief for the first
time excerpts from the Pierce Piano Atlas and the Bluebook
of Pianos. To be clear, applicant never properly made this
evidence of record during the examination process, but
instead waited to attach such “evidence” to its appeal
brief in violation of Trademark Rule 2.142(d). Such
evidence is not properly of record, and it would be given
no consideration by this Board unless the Examining
Attorney in his or her brief did not object to the belated
submission of said evidence. See In re Pennzoil Products
Co., 20 USPQ2d 1753, 1756 n.9 (TTAB 1991) and In re Nuclear
Research Corp., 16 USPQ2d 1316, 1317 n.2 (TTAB 1990). In
this case the Examining Attorney clearly objected to this
Board’s consideration of applicant’s belated evidence
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attached for the first time to its brief in direct
violation of Trademark Rule 2.142(d). (Examining Attorney’s
brief page 7).
However, even if we were to consider applicant’s
belated evidence, it would not help applicant’s cause.
Applicant concedes that the name Mehlin has at most “some
historical significance.” (Applicant’s brief page 2). A
surname is removed from the category of being primarily
merely a surname pursuant to Section 2(e)(4) of the
Trademark Act only if the surname is associated with an
historical person of such great renown that that the
surname is no longer primarily merely a surname but rather
has as its “primary connotation … [that] of the historical
character.” Lucien Piccard Watch v. Since 1868 Crescent
Corp., 314 F. Supp. 329, 165 USPQ 459, 461 (SDNY 1970)(DA
VINCI found to be not primarily merely a surname because
its primary connotation is with the world famous historical
figure Leonardo Da Vinci).
Thus, in order for a surname to lose its status as
primarily merely a surname it must be the surname of an
extremely famous historical figure. If a surname is also
the surname of a lesser historical figure then it still
remains primarily merely a surname. In re Pickett Hotel
Co., 229 USPQ 760, 761-62 (TTAB 1986)(PICKETT SUITE HOTEL
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was held to be primarily merely a surname even though
applicant properly made of record significant evidence
showing that George Edward Pickett was a Confederate
general of some renown).
In stark contrast, applicant’s “evidence” not made of
record (excerpts from the Pierce Piano Atlas and the
Bluebook of Pianos) both merely have very brief listings
for Paul G. Mehlin and Mehlin & Son which are surrounded by
numerous other brief listings for other piano makers.
Decision: The refusal to register is affirmed.