Joint-Stock Company "Baik"

Trademark Trial and Appeal Board

Aug 28, 2007

No. 78521961 (T.T.A.B. Aug. 28, 2007)

Mailed: August 28, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Joint-Stock Company “Baik”
________

Serial No. 78521961
_______

James C. Wray of Law Offices of James C. Wray for Joint-
Stock Company Baik.

Sean Crowley, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).1
_______

Before Seeherman, Quinn and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On November 23, 2004, Joint-Stock Company Baik
(applicant) filed an application to register the mark BAIK
on the Principal Register in standard character form for
“vodka” in International Class 33. Applicant asserts a
bona fide intention to use the mark in commerce as its
basis for registration.

1 This application originally was assigned to a different
examining attorney and was reassigned after issuance of the first
Office action to the examining attorney whose name appears above.
THIS OPINION IS A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78521961
2
The examining attorney refused registration on the
ground that the mark is primarily merely a surname under
Section 2(e)(4) of the Trademark Act, 15 U.S.C.
§1052(e)(4). When the refusal was made final, applicant
appealed. Applicant and the examining attorney have filed
main briefs on the case. In addition, applicant has filed
a reply brief.
We reverse.
Section 2(e)(4) of Trademark Act precludes
registration of a mark which is “primarily merely a
surname” on the Principal Register without a showing of
acquired distinctiveness under §2(f) of the Act, 15 U.S.C.
§1052(f). We must decide on the facts of each case whether
the mark at issue is “primarily merely a surname” under the
Act. See In re Etablissements Darty et Fils, 759 F.2d 15,
225 USPQ 652, 653 (Fed. Cir. 1985). The examining attorney
bears the initial burden to make a prima facie showing of
surname significance. See Id. If the examining attorney
makes that showing, then we must weigh all of the evidence
from the examining attorney and the applicant, to determine
ultimately whether the mark is primarily merely a surname.
See In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB
1994). If there is any doubt, we must resolve the doubt in
Ser No. 78521961
3
favor of applicant. See 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 connected 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 BAIK is in standard character form, we
need not consider the fifth Benthin factor here, that is,
whether the manner in which the mark is displayed might
negate any surname significance.
Rareness
With the first Office action, the examining attorney
provided a summary and partial listing of 456 individuals
having “Baik” as a surname, retrieved by a search of the
Verizon superpages.com computer database. In that action,
the examining attorney stated that “Baik appears to be a
relatively rare surname….” (first Office action, p. 2).
Based upon such evidence, however, Baik appears to be an
extremely rare surname. With the final Office action, the
examining attorney submitted four stories, one financial
abstract and four “screenshots” from the Lexis/Nexis
Ser No. 78521961
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computer database concerning individuals with the surname
Baik. In that action, the examining attorney stated that
“the surname Baik commonly appears in newspapers and other
media.” (final Office action, p. 2). We note, however,
that three of the four “screenshots” are bankruptcy notices
concerning individuals with the surname Baik while the
fourth displays several listings of the same financial
report, filed by an individual with the surname Baik. The
report, from Nelson’s Research Report Headlines, contains
financial information regarding Isu Chemical Co. and lists
an individual named Baik as the reporting analyst in the
body thereof. Such bankruptcy notices and the financial
report are not as widely read as articles for general
circulation and do not support a finding that the public
has been widely exposed to Baik as a surname. With regard
to the articles, two are from trade papers (New Jersey Law
Journal and Pennsylvania Law Weekly) that similarly would
appear to have limited readership. The two remaining
articles appear in general circulation newspapers (The
Indianapolis Star (Indiana) and Los Angeles Times).
However, in all cases the name Baik is buried in the text
of the articles and would be likely to go unnoticed by most
readers. Thus, while the Lexis/Nexis evidence suggests
that Baik appears as a surname in printed media, these nine
Ser No. 78521961
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articles fall far short of supporting the examining
attorney’s contention that “the surname Baik commonly
appears in newspapers and other media,” or a finding that
Baik is well recognized as a surname. Nor does such
evidence support a finding that the number of individuals
with Baik as a surname is any higher than was suggested by
the evidence submitted with the first Office action.
As a result, on this record, we conclude that Baik is
an extremely rare surname. In concluding so, we rely on
the fact that only 456 examples of the Baik surname were
located from a comprehensive directory of the entire United
States. See In re Sava Research Corp., supra at 1381; and
In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987).
Applicant’s Surname Use
The examining attorney acknowledges that “the record
does not reveal any connection” (brief, p. 6) between the
surname Baik and anyone associated with applicant.
Applicant confirms in its reply brief (p. 4) that Baik “is
not the surname of anyone connected with the applicant.”
As a result, this point is neutral, and does not support
either applicant or the examining attorney.
Other Meanings
The examining attorney argues that BAIK has no meaning
other than as a surname and offers with the final Office
Ser No. 78521961
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action dictionary evidence from Dictionary.com, Microsoft
Encarta, and Merriam-Webster OnLine in support of this
position. Applicant asserts that BAIK is “an arbitrary
Russian sounding word mark that has no meaning to consumers
of the Applicant’s goods.” (brief, p. 2). However,
applicant goes on to argue that the “term sounds similar to
Baikal, a Russian lake in Siberia” (reply brief, p. 5) and
the Baikal mountain range in Siberia. (Id.) Applicant
further argues that BAIK “is promoted along with the words
‘Vodka Siberia’” (Id.) and that, as a result, the “primary
significance of the mark to the purchasing pubic is as a
fanciful Russian term used in a trademark sense….” (Id.)
In support of its contention, applicant submits with its
reply brief an entry for Baikal Lake, from the printed
reference work Encyclopedia International (1979), which
describes it as the deepest body of fresh water in the
world, located in Siberia.2
We accept applicant’s representation that BAIK is a
coined term, particularly because there is no evidence that
the term has any recognized meaning.3 Furthermore, we agree

2 We hereby take judicial notice of this entry. See University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594, 596 (TTAB 1982); aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).

3 Applicant argues, without evidentiary support, that BAIK has a
meaning in the Malay language. Inasmuch as applicant has not
Ser No. 78521961
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with applicant that BAIK, even though a coined term, sounds
like a word in the Russian language. We also agree that
the mark evokes or sounds similar to the word “Baikal,”
which has a recognized geographic significance, denoting a
lake and mountain range in the Siberian region of Russia.
Thus, while this is unlike cases where the mark is a
recognized foreign term, or a mark derived from allegedly
recognized foreign terms, the evidence of record
nonetheless supports applicant’s contention that BAIK
sounds like a Russian language term. Cf. In re Picone, 221
USPQ 93, 94 (TTAB 1984); and In re Carl Braun, Camerawerk,
124 USPQ 184, 185 (TTAB 1960).
Further, we note the absence of evidence that any
person with the Baik surname has achieved any notoriety.
Cf. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004)
(evidence of public figures with surname Rogan found
supported conclusion that public would perceive Rogan as a
surname).
Look and Feel
Lastly we must consider whether BAIK has the “look and
feel” of a surname. As to this factor, the examining

submitted any evidence in support of this contention, we will
give it no further consideration in our determination herein. We
note, nonetheless, that it is unlikely consumers would be
sufficiently conversant in the Malay language to understand any
such meaning.
Ser No. 78521961
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attorney argues that BAIK has the look and feel of a
surname because the evidence of record “established that
the proposed mark does not have any primary recognition
other than that of a surname.” (brief, p. 7) Applicant
argues, instead, that “BAIK has the appearance and sound of
an acronym or made-up Russian-sounding nonsense word.”
(reply brief, p. 6)
We reject the examining attorney’s argument that the
mere fact that a mark may not have any recognized meaning
other than that of a surname imbues the mark with the “look
and feel” of a surname. As discussed above, BAIK may not
have a defined meaning; nonetheless the term gives the
appearance of a word in the Russian language and evokes the
Baikal region of Siberian Russia. In addition, in a case
such as this involving a very rare surname, we cannot
assume that the purchasing public will view the mark as a
surname based on exposure to the surname use. See In re
Garan Inc., supra at 1540. It is in the case of a rare
surname that we need to weigh “look and feel” carefully.
For example, certain surnames, though rare, resemble common
surnames “in their structure and pronunciation.” See In re
Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566
(TTAB 1988). However, we see no evidence that such is the
case with BAIK. Cf. In re United Distillers plc, supra at
Ser No. 78521961
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1221. In this case, there is no evidence that relevant
purchasers would perceive BAIK as a surname.
In further support of the refusal to register, the
examining attorney introduced evidence with the final
Office action from the Yahoo People Search computer
database to show that “more common” surnames, such as
“Paik” and “Bak,” are similar in appearance and sound to
BAIK. We note, however, that such evidence reveals
approximately 800 individuals with the surname “Paik,” less
than 900 with the surname “Naik,” and 1100 with the surname
“Bak.” As such, the examining attorney’s own evidence only
suggests that the extremely rare surname Baik is similar to
surnames that are almost as rare, i.e., fewer than 3,000
other people in this country. Thus, we are not convinced
that the similarity of Baik to other obscure surnames
somehow results in Baik having the “look and feel” of a
surname.
In sum, based on the record in this case, we conclude
that the examining attorney has failed to meet the burden
of establishing a prima facie case that BAIK is primarily
merely a surname. Accordingly, we conclude that BAIK is
not primarily merely a surname. Furthermore, and as noted
above, we must resolve any doubt in favor of applicant.
See In re Benthin Management GmbH, 37 USPQ2d at 1334.
Ser No. 78521961
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Decision: The refusal to register applicant’s mark on
the ground that it is primarily merely a surname is
reversed.
Seeherman, Administrative Trademark Judge, concurring:
I add this concurring opinion to express my views
about the way the “look and feel” factor should be
interpreted in assessing whether a mark is primarily merely
a surname. The statute provides that a mark should be
refused registration not if it is a surname, but if it is
primarily merely a surname. As a result, a mark such as
HILL, which can be a surname, is registrable without resort
to Section 2(f) because it has another meaning. I believe
the “look and feel” factor should have the same effect.
That is, 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.
However, I do not think that, in the converse
situation, registration should be refused simply because
the mark at issue is similar in sound or appearance to
other surnames. The purpose behind prohibiting the
registration of marks that are primarily merely surnames is
not to protect the public from exposure to surnames, as
though there were something offensive in viewing a surname.
Rather, the purpose behind Section 2(e)(4) is to keep
Ser No. 78521961
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surnames available for people who wish to use their own
surnames in their businesses, in the same manner that
merely descriptive terms are prohibited from registration
because competitors should be able to use a descriptive
term to describe their own goods or services.4
Because the purpose of Section 2(e)(4) is not to
protect the public from being exposed to surname marks, the
fact that the public may view a mark as a surname because
it has the “look and feel” of a surname should not be the
basis for refusing registration of rare surnames. If a
surname is extremely rare, it is also extremely unlikely
that someone other than the applicant will want to use the
surname for the same or related goods or services as that
of the applicant. Therefore, if the Office is not able to
muster sufficient evidence to show that the mark is the
surname of a reasonable number of people, and must instead
resort to finding other surnames which rhyme with the mark
or differ from the mark by one or two letters, I believe
that it is not proper to refuse registration. Interpreting
the “look and feel” factor to refuse registration of marks

4 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.”).

Ser No. 78521961
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simply because they are similar to recognized surnames does
not serve the intention of the statute.