Lash's Lessons, LLC

Trademark Trial and Appeal Board

May 27, 2008

No. 78857737 (T.T.A.B. May. 27, 2008)

Mailed: May 27, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Lash’s Lessons, LLC
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Serial No. 78857737
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Andrew D. Dorisio of King & Schickli, PLLC for Lash’s
Lessons, LLC.

Laurie R. Kaufman, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
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Before Hairston, Grendel and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Lash’s Lessons, LLC seeks to register on the Principal
Register the mark MERROW (in standard character form) for
goods ultimately identified as “toys, namely playsets for
toy figures and plastic character toys; toy action figures
and accessories therefor; stuffed and plush toy animals” in
International Class 28.1

1 Application Serial No. 78857737, filed April 10, 2006, which is
based on an allegation of a bona fide intention to use the mark
in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78857737
2
Registration has been finally refused pursuant to
Section 2(e)(4) of the Trademark Act, 15 U.S.C.
§1052(e)(4), on the ground that the mark is primarily
merely a surname.
Applicant has appealed, and briefs have been filed.
Evidentiary Objection
Before turning to the merits of the examining
attorney’s refusal, we must first address an evidentiary
objection of applicant. With her appeal brief, the
examining attorney submitted pages from the online versions
of The American Heritage Dictionary of the English Language
and Merriam-Webster Dictionary to show the absence of
entries for the term “merrow.” The examining attorney
requested that the Board take judicial notice of the pages,
relying on In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006).
Applicant has objected to the Board’s taking judicial
notice of these pages arguing that the submissions are
untimely, and not proper subject matter for judicial
notice. Applicant maintains that the examining attorney’s
reliance on Red Bull is misplaced because the Board therein
“took judicial notice of a definition, not of a dictionary
itself.” Reply brief at 5.
We do not find applicant’s objection to be well taken.
In Red Bull, the Board granted an examining attorney’s
Ser No. 78857737
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request to take judicial notice of online dictionary
definitions submitted with a brief because the sources of
the definitions were clearly identified, and readily
verifiable and reliable, widely-available print
publications. In this case, the sources of the dictionary
pages at issue are clearly identified. Moreover, there is
no question that these dictionaries are readily verifiable
and reliable, widely-available print publications. There
is no reason, therefore, to exclude the dictionary pages
simply because they show the absence of a definition,
rather than a definition itself. In view of the foregoing,
we find that the online dictionary pages submitted by the
examining attorney with her appeal brief are acceptable
material for judicial notice.
Surname Refusal
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). The burden is on the
examining attorney to establish 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 (Fed. Cir. 1985).
Among the factors to be considered in determining whether a
Ser No. 78857737
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term is primarily a surname are (1) the degree of the
surname’s rareness; (2) whether anyone connected with
applicant has the 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.2
See In re Benthin Management GmbH, 37 USPQ2d 1332, 1333
(TTAB 1995). See also In re Gregory, 70 USPQ2d 1792 (TTAB
2004).
The examining attorney submitted the results of a
search conducted of the Lexis/Nexis (“P-FIND”) database
which revealed that there are 607 residential listings in
the United States for persons with the surname “Merrow” (a
printout of the first 100 of the retrieved listings was
included); the results of a search conducted of the “Yahoo!
People Search” database which revealed that there are
“about 584” listings for persons with the surname “Merrow”
(a printout of the first 10 of the retrieved listings was
included); and a printout from the web site
http://www.namestatistics.com which states that: “[m]errow
is the #16823 most common last name. 0.001% of last names

2 Because applicant seeks to register MERROW in standard
character form, the fifth factor, i.e., whether the mark is
presented in a stylized form distinctive enough to create a
separate non-surname impression, is not a factor in this case.
Ser No. 78857737
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in the US are merrow. Around 2500 US last names are
merrow.”
In addition, the examining attorney submitted the
results of a search of the “Lycos people search” database
which revealed 586 listings in the United States for
persons with the surname “Merrow” (a printout of the first
10 of the retrieved listings was included); a printout from
the website http://longlostpeople.com which indicates that
it located “3,295 matches” for persons with the surname
“Merrow”; a printout from the website http://onelook.com
which defines “merrow” as “name: A surname (rare: 1 in
100000 families, popularity rank in the U.S.: #16823;” and
a printout from “Wikipedia” which states that:
Merrow may refer to:
-Merrow, a creature in Irish mythology
-Merrow, Surrey
-Charlie Merrow
-Merrow Sewing Machine Company, an American
Manufacturer

-Merrow, an aquatic subrace of ogres in the
Dungeons and Dragons game.

Applicant, in urging reversal of the refusal to
register, submitted a printout from Lexis/Nexis which
indicates that the “P-FIND” database contains 146 million
persons. In addition, applicant submitted several types of
evidence to show that “merrow” means a “mermaid.” The
Ser No. 78857737
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evidence includes an entry from The Oxford English
Dictionary (2d ed. 2001) where “merrow” is defined as “A
mermaid;” an entry from A Dictionary of Folklore (1999)
where “merrow” is defined as “Irish equivalent of a
MERMAID;” and an entry from Spirits, Fairies, Gnomes, and
Goblins: An Encyclopedia of The Little People (1996) where
“merrow” is defined, in relevant part, as:
This is the name of the Irish Mer-people, who may
also be called the Murdhuacha, Moruadh, Moruach,
Muir-Gheilt, Samhghubha, or Suire. The mermaids
appear as beautiful young women above the waist
with pale skin, dark eyes, and long hair, but as a
fish below the waist. Their mermen are ugly, with
green skin, teeth and hair, but a sharp red nose
and tiny, narrow eyes.

Other evidence includes an entry from Bartleby.com relying
on the Dictionary of Phrase and Fable (1898) where “merrow”
is defined as “[a] mermaid, believed by Irish fisherman to
forebode a coming storm;” the same “Wikipedia” entry
submitted by the examining attorney which shows that
“merrow” may refer to, inter alia, “a creature in Irish
mythology;” and a revision to the “Wikipedia” entry dated
June 11, 2007 which states that “merrow” is “the Scottish
and Irish Gaelic equivalent of the mermaid and mermen of
other cultures.”

Ser No. 78857737
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As to the first factor, the degree of rareness of
MERROW, the examining attorney argues that it is a fairly
strong surname. Applicant, however, argues that, at best,
the record shows that MERROW is a rare surname. Applicant
maintains that based on the evidence of record, only
0.0004% and 0.001% of the people in the Lexis/Nexis (“P-
Find”) and the “Long Lost People” databases, respectively,
have ‘merrow’ as a surname.
While we agree with applicant that the record shows
that MERROW is indeed a rare surname, a mark may be found
to be primarily merely a surname even though it is not a
common surname. See In re Giger, 78 USPQ2d 1405 (TTAB
2006). See also In re E. Martoni Co., 78 USPQ2d 589 (TTAB
1975); and In re Industrie Pirelli Societa per Azioni, 9
USPQ2d 1564 (TTAB 1988). Moreover, there is no minimum
number of listings to prove that a mark is primarily merely
a surname. With respect to applicant’s argument regarding
the small percentage of people living in the United States
with the surname “Merrow,” “given the large number of
different surnames in the United States, even the most
common surnames would represent but small fractions of the
total population.” In re Gregory, supra, 72 USPQ2d at
1795. Furthermore, a review of the submitted evidence from
the databases reveals that the listings are spread
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throughout the United States and include households in at
least twenty different states and ten major cities. In
this case, we find that the evidence submitted by the
examining attorney is sufficient to establish the surname
significance of the mark MERROW to the relevant purchasing
public.
As to the second factor, i.e., whether anyone
associated with applicant has the surname MERROW, applicant
maintains that no one connected with it has MERROW as a
surname, and therefore, this factor should be resolved in
applicant’s favor. However, “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 mark would be perceived as a surname.” In re
Gregory, supra, 72 USPQ2d at 1795. In other words, the
fact that no one connected with applicant has MERROW as a
surname does not aid applicant and only means that the
factor is neutral. It certainly does not lead to the
conclusion that purchasers will perceive the term as a non-
surname.
As to the third factor, applicant contends that its
mark has meaning other than as a surname because “merrow”
means “mermaid.” However, both the Benthin decision and
our primary reviewing court clearly require that the other
Ser No. 78857737
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meaning be “recognized” by a significant number of people.
See In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ
238 (CCPA 1975); and In re Benthin Management GmbH, supra.
We do not believe that a significant number of people would
recognize this non-surname meaning because it is obscure.
Applicant’s own evidence shows that this meaning is
associated with Irish folklore or mythology. Also, the
examining attorney has submitted evidence which shows the
absence of entries for “merrow” in two unabridged English
language dictionaries commonly used in the United States.
This suggests to us that this meaning of “merrow” is
nonexistent in the United States. Thus, this other meaning
of “merrow” does not rebut the examining attorney’s prima
facie surname case. Applicant certainly has not
demonstrated that consumers in the United States would
recognize that “merrow” is another name for a mermaid.
As to the fourth factor, applicant argues that MERROW
does not have the look and sound of a surname. Applicant
maintains that the purchasing public “would be more apt to
consider MERROW as the phonetic equivalent of the
dictionary word ‘marrow’ due to their identical
pronunciations, than to liken it to a surname.” Brief at
8. The examining attorney, on the other hand, contends
that the term has the look and sound of a surname because
Ser No. 78857737
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consumers are accustomed to seeing and hearing the term as
a surname. Admittedly, this is a somewhat subjective
factor, but we agree with the examining attorney that the
term has the look and sound of a surname, especially since
the record shows that there are numerous individuals with
the surname “Merrow;” that such term has no readily
recognized meaning other than its surname significance; and
that nothing in the record indicates that MERROW would be
perceived as an initialism or acronym, or a coined term.
Rather the term MERROW “appears to be a cohesive term with
no meaning other than as a surname.” In re Gregory, supra,
72 USPQ2d at 1796.
Balancing the various factors, we find that three of
the four factors bearing upon the issue herein favor a
determination that the primary significance of the mark
MERROW to the purchasing public for applicant’s toys 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.
Decision: The refusal to register applicant’s mark
under Section 2(e)(4) is affirmed.