Kellogg North America Company

Trademark Trial and Appeal Board

Feb 22, 2007

No. 76610903 (T.T.A.B. Feb. 22, 2007)

Mailed: February 22, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kellogg North America Company
________

Serial No. 76610903
_______

Patricia S. Smart of Smart & Bostjancich for Kellogg North
America Company.

Anne Farrell, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Hairston, Bucher and Mermelstein, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Kellogg North America Company has filed an application
to register the mark KEEBLER (standard character form) for
“snack packs consisting of a combination of crackers and
cheese or cookies and pudding.”1

1 Serial No. 76610903, filed September 7, 2004, alleging first
use dates of July 14, 2004.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76610903
2
Registration has been finally refused under Section
2(e)(4) of the Trademark Act on the ground that the mark
applicant seeks to register is primarily merely a surname.
Applicant has appealed. Applicant and the trademark
examining attorney have filed briefs, and applicant filed a
reply brief. We affirm the refusal to register.
The initial burden is on the examining attorney to
establish a prima facie case that a mark is primarily
merely a surname. If a prima facie case is established,
the burden then shifts to the applicant to rebut the
showing made by the examining attorney. The question of
whether a term sought to be registered is primarily
merely a surname may only be resolved on a case by case
basis. See In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d
1939 (TTAB 1993).
The factors to be considered in determining whether a
term is primarily merely a surname are the following:
(1) The degree of a surname’s rareness;

(2) Whether anyone connected with the applicant
has that surname;

(3) Whether the word has any recognized meaning
other than that of a surname; and

Ser No. 76610903
3
(4) Whether the word has the look and sound of a
surname.2

See In re Benthin Management GmbH, 37 USPQ2d 1332

(TTAB 1995).

In this case, we agree with the examining attorney
that the record contains sufficient evidence to make a
prima facie case that the primary significance of the mark
KEEBLER to the purchasing public for applicant’s goods is
that of a surname and that such showing has not been
rebutted by applicant. Specifically, the examining
attorney furnished evidence that a search of the LexisNexis
(“USFIND Person Locator-Nationwide”) database returned 492
residential listings of individuals with the surname
“Keebler” (a printout of 100 of the retrieved listings was
included); the results of a “Google” search (conducted
August 19, 2005) for “keebler surname” which returned
“hits” or website links for the homepages of the “Keebler
family”;3 “Surnames Forums Beginning with K” which lists
“Keebler”; and “ancestors.com” which states that it will
provide the coat of arms for persons with the “Keebler”;4

2 A fifth factor, not present in this case, concerns whether a
mark which is presented in a stylized form is distinctive enough
to create a separate non-surname impression.
3 http://freepages.genealogy.rootsweb.com/
4 http://www.genforum.genealogy.com/keebler/
Ser No. 76610903
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surname. In addition, the examining attorney submitted an
excerpt from The American Heritage Dictionary of the
English Language (Fourth Edition 2000) that shows no entry
for the word “keebler”; and the results of a search (also
conducted on August 19, 2005) of the homepage of
“FamilyHistory.com” for “KEEBLER” which indicates that the
surname appears in census records and historical newspaper
archives.
Applicant, with respect to its position, submitted a
printout from the U.S. Census Bureau website estimating the
2004 U.S. population at approximately 293 million.
Applicant argues that the evidence of record shows that
“Keebler” is only very rarely used as a surname. Further,
applicant argues that there is no evidence that any persons
with the surname “Keebler” have received significant media
coverage such that there is a public recognition of the
surname. Applicant maintains that this case is unlike In
re Gregory, 70 USPQ2d 1792 (TTAB 2004), where the surname
“Rogan” was rare in terms of frequency in the U.S.
population, but there were repeated uses of the surname in
the media, and the Board therefore concluded that “Rogan”
was not a rare surname.
We recognize that unlike Gregory there is no evidence
in this case of significant media coverage of any persons
Ser No. 76610903
5
with the surname “Keebler” such that we may conclude that
“Keebler” is not a rare surname because of public
recognition of “Keebler.” Although KEEBLER may be a rare
surname, it is nonetheless the case that even a rare
surname is unregistrable (absent a showing of acquired
distinctiveness) if its primary significance to purchasers
is that of a surname. See, e.g., In re Etablissements
Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985).
Further, this Board has held that “there is no minimum
number of directory listings required to establish a prima
facie case” in support of a surname refusal. In re
Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566
(TTAB 1988). See also In re Gregory, supra at 1795 (no
“per se benchmark” as to minimum number of listings); and
In re Petrin Corp., 231 USPQ 902 (TTAB 1986).
We find, therefore, that the results of the searches
of the LexisNexis database and “Google,” when combined with
the “negative” dictionary evidence, are sufficient to
establish the surname significance of the mark KEEBLER to
the relevant purchasing public. In other words, the Board
finds that the examining attorney’s evidence is sufficient
to support a prima facie case that the mark is primarily
merely a surname.
Ser No. 76610903
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Insofar as the second factor is concerned, applicant
argues that no one associated with it has the surname
“Keebler” and therefore this fact favors applicant.
However, contrary to applicant’s contention, the Board has
stated that the fact that “a proposed mark is not the
applicant’s surname, or the surname of an officer or
employee, does not tend to establish one way or the other
whether the proposed mark would be perceived as a surname.”
In re Gregory, supra at 1795. Thus, the fact that no one
associated with applicant has the surname “Keebler” does
not favor applicant, but rather is a neutral factor in this
case.
With respect to the third factor, there is no evidence
that KEEBLER has another recognized meaning, and in the
absence thereof, this factor favors a finding that the mark
KEEBLER is primarily merely a surname.
Despite applicant’s argument to the contrary, we are
of the opinion that KEEBLER looks and sounds like a
surname. We cannot say that it does not have the look and
sound of a surname. It is not an acronym, initialism or in
the nature of a coined term. Also, we observe that
“Keebler” is not unlike other surnames ending in “-ler”
such as Miller, Butler, Wheeler, Fuller or Fowler. This
Ser No. 76610903
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factor favors a finding that the mark KEEBLER is primarily
merely a surname.
Finally, as evidence that it is entitled to
registration of its mark in the absence of a showing of
acquired distinctiveness, applicant relies on a prior
registration which it owns, namely, Registration No.
0221594 for the mark KEEBLER (standard character form) for
cookies, crackers, and biscuits. This registration issued
on December 7, 1926, under the Trademark Act of 1905.
According to applicant, surnames were prohibited from
registration under this Act, and no provision existed for
registration on the basis of acquired distinctiveness.
Applicant, however, is not totally correct concerning the
Trademark Act of 1905. Under this Act, a surname was not
registrable unless it was shown that it had been used
exclusively by the applicant as a trademark for the period
of ten years prior to February 20, 1905, or was in special
form. See Daphne Robert, The New Trade-Mark Manual: A
Handbook on Protection of Trade-Marks in Interstate
Commerce (1947) at p. 52. (“Names which had acquired
secondary significance were not registrable unless they
were used during the ten-year period or were printed,
written, impressed or woven in some particular manner. In
the latter case, even after registration, protection was
Ser No. 76610903
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limited to the distinctive manner of display, and no rights
were recognized in the name as such.”). Thus, we are not
persuaded that this registration supports applicant’s
position that it is entitled to registration without a
showing of acquired distinctiveness. Moreover, in order
to counter applicant’s argument, we note that the examining
attorney made of record a more recently issued registration
owned by applicant, namely, Registration No. 1713496 for
the mark KEEBLER (standard character form) for cookies,
crackers, etc., issued September 8, 1999 under the
provisions of Section 2(f) of the Lanham Act. This
registration tends to supports the examining attorney’s
position that applicant is not entitled to registration in
the absence of a showing of acquired distinctiveness.
Balancing the factors, three of the four factors
bearing upon the issue herein favor a determination that
the primary significance of the mark KEEBLER to the
purchasing public for applicant’s snack packs is that of a
surname, while the other factor is neutral. We find,
therefore, that the examining attorney has presented
evidence sufficient to establish that applicant’s mark is
primarily merely a surname and that applicant has failed to
rebut the showing.
Ser No. 76610903
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Decision: The refusal to register applicant’s mark
under Section 2(e)(4) is affirmed.