H. Lundbeck A/S

Trademark Trial and Appeal Board

Mar 26, 2004

No. 76268930 (T.T.A.B. Mar. 26, 2004)

Mailed: Paper No. 9
March 26, 2004 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re H. Lundbeck A/S
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Serial No. 76268930
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William R. Hansen and Gianfranco G. Mitrione of Duane
Morris LLP for H. Lundbeck A/S.
Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Hohein, Walters and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
H. Lundbeck A/S, a corporation of Denmark, has applied
to register LUNDBECK as a mark for goods identified,
following amendment, as "pharmaceutical preparations for
use in the treatment of diseases of the central nervous
system," in International Class 5; "printed instructional
and teaching materials in the field of diseases of the
central nervous system," in International Class 16;
"educational services, namely, seminars, symposia and
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76268930
2
course of instruction in the field of medicine," in
International Class 41; and "medical services," in
International Class 42.
The application is based on applicant's stated
intention to use LUNDBECK as a mark "in international and
in interstate commerce within the United States" and claims
a priority filing date based on its filing of a European
Community Trademark (CTM) application for registration of
LUNDBECK in the same four classes, such application having
been filed February 1, 2001. The instant application was
filed within six months of the filing of the CTM
application.
It is clear that applicant seeks registration under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), in
addition to the implied basis under Section 44(e), 15
U.S.C. §1126(e).1 Specific reference has been made to both
Section 1(b) and Section 44(d) in the application. We
note, however, in regard to the Section 44(d) claim of
priority, that such a claim is available only in regard to
the "first-filed" application in a "country of origin."
1 Because a claim of priority under Section 44(d) provides a
basis for filing but not a basis for registration, the Office
presumes that an applicant relying on Section 44(d) for filing
will rely on Section 44(e) for registration, in addition to any
separate reliance on use or intent-to-use. See TMEP Section
1003.03.
Ser No. 76268930
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See Section 44(d)(1) of the Trademark Act and TMEP Section
1003.01, as to the "first-filed" requirement, and TMEP
Section 1002.04 and Appendix B as to the "country of
origin" issue and applicant's reliance on a CTM
application.
Concurrently pending before this panel of the Board is
applicant's appeal of a refusal to register LUNDBECK as a
mark solely in International Class 5, Serial No. 76268929.2
That application is based on Section 44(e) and applicant's
ownership of a Danish registration that issued July 1,
1950. Thus, it appears clear that applicant's CTM
application is not the "first-filed" application to
register LUNDBECK for these Class 5 goods. Therefore, it
appears that applicant's claim of priority should be
limited to its Class 16 goods and its Class 41 and 42
services. If applicant is ultimately successful in this
appeal, it will obtain a Notice of Allowance, because the
one basis for the application, as to all involved classes,
is applicant's intent to use the mark in commerce. If
applicant ultimately obtains its Notice of Allowance, it
should thereafter file an amendment to its application
deleting the claim of priority as to its Class 5 goods.
2 The Class 5 goods in the single class application are identical
to the Class 5 goods in the four class application involved in
Ser No. 76268930
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Unrelated to the basis or bases of the application,
the examining attorney has refused registration under
Section 2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4)
on the ground that LUNDBECK is primarily merely a surname.
Applicant was offered the opportunity to pursue
registration under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), with various options outlined for
establishing acquired distinctiveness. Applicant did not
amend to seek registration under Section 2(f). When the
refusal of registration was then made final, applicant
appealed. Applicant and the examining attorney filed
briefs, but applicant did not request an oral hearing. We
affirm the refusal of registration.
As a preliminary matter, we note the examining
attorney's objection to exhibit E to applicant's appeal
brief. While the other exhibits to the brief all are items
that were submitted during prosecution of the application,
exhibit E was not. Accordingly, we sustain the examining
attorney's objection to this exhibit and have not
considered it. See 37 C.F.R. §2.142(d).
The record in this case otherwise includes 56 listings
of individuals with the surname LUNDBECK, retrieved by the
this appeal, i.e., "pharmaceutical preparations for use in the
treatment of diseases of the central nervous system."
Ser No. 76268930
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examining attorney from a computerized database of
telephone listings; three article excerpts retrieved by the
examining attorney from the NEXIS database each of which
refers to an individual with the surname LUNDBECK; a
printout from the electronic version of The American
Heritage Dictionary of the English Language, showing that
LUNDBECK does not appear between the listings of LUND and
LUNDEBERG; photocopies of certain pages from the Manhattan
(NY) telephone directory, showing no listings for LUNDBECK;
photocopied pages from three dictionaries of names and
surnames, none of which includes a listing for LUNDBECK; a
list of the "hits" or "search results" obtained by
applicant when LUNDBECK was entered into a web browser to
search for web pages featuring the word, but the pages
themselves were not provided; 50 excerpts retrieved by
applicant from the NEXIS database showing use of LUNDBECK
or H LUNDBECK A/S, primarily in wire service reports but
also in some articles; and reprints of various web pages
from the applicant's web site.
The Office has the burden of establishing a prima
facie case that a term is primarily merely a surname. In
re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652,
653 (Fed. Cir. 1985). Moreover, “[t]he question of whether
a word sought to be registered is primarily merely a
Ser No. 76268930
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surname within the meaning of the statute can only be
resolved on a case by case basis,” taking into account a
number of various factual considerations. Id.
There are five accepted factors to be considered in
the analysis:
(1) Is the word a common or rarely used surname?
(2) Does anyone connected with the applicant have that
surname?
(3) Does the word have meaning other than as a
surname?
(4) Does the word look and sound like a surname?
(5) Is the word presented in use in a stylized form
distinctive enough to create a separate non-surname
impression?
In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-34
(TTAB 1995) (Examining attorney's refusal to register
BENTHIN reversed, because it was a rare surname, did not
look and sound like a surname, and was set forth in a
highly stylized oval design).
In this case, there is no stylization or design
involved; applicant seeks merely to register LUNDBECK in
typed form. Thus, the fifth factor is not a factor in this
case.
Ser No. 76268930
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The examining attorney has conceded that LUNDBECK is a
rare surname. Final refusal, unnumbered p. 2 ("Moreover,
though only '56' LUNDBECK references were listed, the term
may in fact be a rare surname.") Even if the examining
attorney had not conceded the point, we would find LUNDBECK
to be a rare surname.
As to the second factor, applicant asserts that
LUNDBECK is not the surname of anyone within applicant's
corporate management or supervisory board. Nonetheless, as
applicant's web pages readily reveal, applicant's company
name and mark are derived from the name of its founder
"Hans Lundbeck." Any visitor to applicant's web pages
would be exposed to this information on applicant's company
history and realize that LUNDBECK is a surname.
Applicant's reliance on In re Sava Research Corp., 32
USPQ2d 1380 (TTAB 1994) and In re Monotype Corp., 14 USPQ2d
1070 (TTAB 1989), is misplaced. It is not necessary that a
current employee, supervisor or corporate manager of
applicant have the surname LUNDBECK for the "connected
with" factor to weigh in favor of finding the word a
surname. We find particularly significant the fact that
the founder of applicant, an individual prominently
discussed on applicant's website, was named LUNDBECK.
Ser No. 76268930
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While employees and even managers or directors may come and
go, applicant will always have the same founder.
Applicant and the examining attorney obviously differ
in their estimation of whether LUNDBECK has significance
other than as a surname. The examining attorney relies on
the absence of LUNDBECK from the listings of an electronic
dictionary to conclude that the word has no meaning other
than as a surname. While applicant concedes "LUNDBECK may
not have other recognized meanings," based on its "Google"
search results, and its NEXIS excerpts, applicant argues
that "the relevant purchasing public will recognize the
mark as being associated with products and services
relating to the treatment of the central nervous system and
not as primarily merely a surname." Brief, p. 11. The
examining attorney, citing In re McDonald's Corp., 230 USPQ
304 (TTAB 1986), argues that this evidence is only relevant
in establishing distinctiveness under Section 2(f) and
cannot provide support for registration on the Principal
Register without a claim of acquired distinctiveness.
We agree with the examining attorney and find the
McDonald's case on point. In that case, the "McDonald's"
restaurant chain was denied registration of its mark on the
Principal Register, despite a survey which showed 85
percent of respondents thought of hamburgers, golden arches
Ser No. 76268930
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or a restaurant when they think of the word "McDonald's."
Id. In affirming the examining attorney's refusal of
registration, the Board held that the section of the
Trademark Act prohibiting registration of surnames requires
focus on the ordinary meaning of a word, without regard to
what secondary meaning the word may have acquired as the
result of promotion or advertising, absent a claim of
acquired distinctiveness. Id. Accordingly, we agree with
the examining attorney that LUNDBECK's ordinary meaning is
as a surname and nothing else.
Moreover, even if we were to consider the web page
search results and NEXIS excerpts evidence applicant has
proffered, we note that much of it provides little support
for the stated proposition that prospective purchasers of
applicant's products would associate LUNDBECK with
particular types of pharmaceutical products. As for the
"Google" search results, the record reveals only the number
of web pages retrieved, not the contents of the web pages
themselves. Thus, we have no way of determining whether
the pages would demonstrate the asserted connection. In
addition, the majority of the web pages listed in the
results appear to be in languages other than English. As
for the NEXIS excerpts, the vast majority are wire service
reports and publications outside the United States; and
Ser No. 76268930
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many are merely stock listings reporting the increase or
decrease in applicant's stock price, without reference to
any particular products.
We come, then, to the last factor to be discussed,
i.e., whether LUNDBECK has the look and sound of a surname.
We conclude that it does. Many of the NEXIS excerpts
applicant has submitted use not merely LUNDBECK, but
applicant's full name, H. LUNDBECK A/S. Presenting
LUNDBECK with a leading initial certainly makes it look
like a surname. In re I. Lewis Cigar Mfg. Co., 205 F.2d
204, 98 USPQ 265 (CCPA 1953), and Sears, Roebuck and Co. v.
Watson, Comr. Pats., 204 F.2d 32, 96 USPQ 360 (CA DC 1953).
We also note the Manhattan (NY) telephone directory pages
and surname dictionary references applicant has put into
the record. While none of these lists LUNDBECK, they list
such surnames as LUND, LUNDBERG, LUNDBLAD, LUNDGREN,
LUNDQUIST, and LUNDSTROM. We conclude that LUNDBECK has
the look and sound of a surname because it will be
perceived as another LUND-formative surname.
Balancing the various factors, we find that the
relative rareness of LUNDBECK as a surname is outweighed by
the strong identification of applicant with its founder
"Hans Lundbeck," the fact that the ordinary meaning of
LUNDBECK is merely as a surname, and by virtue of it having
Ser No. 76268930
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the look and sound of a surname, being quite similar in
construction to other two-syllable surnames beginning with
LUND.
Decision: The refusal of registration under Section
2(e)(4), on the ground that LUNDBECK, when used, will be
perceived as primarily merely a surname, is affirmed.