Manhattan Scientifics, Inc.

Trademark Trial and Appeal Board

Nov 14, 2001

No. 75580055 (T.T.A.B. Nov. 14, 2001)

11/14/01

Paper No. 12
DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Manhattan Scientifics, Inc.
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Serial No. 75/580,055
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James C. Wray for Manhattan Scientifics, Inc.

Heather D. Thompson, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Cissel, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Manhattan Scientifics, Inc. seeks to register the mark
HOCKADAY FUEL CELL (with the words “FUEL CELL” disclaimed
apart from the mark as shown) for goods identified after
amendment as “fuel cells and fuel cell tanks for producing
electrical energy; fuel cell chemical fuel provided as a
unit with the foregoing,” in International Class 9.1

1 Application Serial No. 75/580,055, filed October 30, 1998,
based upon a claim that applicant possesses a bona fide intention
to use the mark in commerce, under Section 1(b) of the Trademark
Act, 15 U.S.C. §1051(b).

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/580,055
2
The Trademark 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 applicant’s mark is
primarily merely a surname.
When the refusal to register was made final, applicant
appealed. Applicant and the Trademark Examining Attorney
have filed briefs and applicant has filed a reply brief.
Applicant did not request an oral hearing.
We affirm the refusal to register.
In support of her surname refusal, the Trademark
Examining Attorney has made of record the results of her
search of a database containing over 115 million names,
finding 778 “Hockaday” surname listings from PHONEDISC
POWERFINDER USA ONE 1998 (4th ed.), as well as a page from
Merriam-Webster’s Collegiate Dictionary (10th ed.) 1998,
showing that there is no listing of the term “Hockaday” in
that dictionary. Along with the refusal to register, the
Trademark Examining Attorney made of record excerpts from
the LEXIS/NEXIS database of periodical publications. The
representative results of the search of that database show
that HOCKADAY is the surname of a variety of individuals.
The record also shows from repeated entries that it is the
Serial No. 75/580,055
3
name of a funeral home and a school.2 Finally, the
Trademark Examining Attorney submitted the results of a
search of the U.S. Census Bureau’s surname database.
Applicant argues that the Trademark Examining Attorney
has failed to establish a prima facie surname case.
Applicant challenges the Trademark Examining Attorney’s
PHONEDISC evidence on the ground that the quantum of
evidence submitted by the Examining Attorney is
indeterminate of the primary significance of the term to
purchasers. Applicant asserts that “Hockaday” is a common
English language word. In support of its position,
applicant has submitted a dictionary entry from Webster’s
Third New International Dictionary (1981), where “hock day”
is defined as “the second Tuesday after Easter celebrated
in England before the 18th century…” Applicant also argues
that the Trademark Examining Attorney has improperly
dissected the mark rather than looking at the mark in its
entirety.

2 We note in this regard that surnames are routinely used as
key parts of the names of businesses, schools and so forth,
indicating the surnames of the people for whom they are named.
See Harris-Intertype, supra; In re Champion International Corp.,
229 USPQ 550, 551 (TTAB 1985). Given that it is a common
practice to name enterprises after individuals, it would be
surprising if these institutions did not also trace the origin of
these names to the surname of an entrepreneur, educator, et al.
Serial No. 75/580,055
4
The sole issue before us in this appeal is whether the
mark applicant intends to use, HOCKADAY FUEL CELL, is
primarily merely a surname within the meaning of Section
2(e)(4) of the Lanham Act. The test for determining
whether a mark is primarily merely a surname is the primary
significance of the mark to the purchasing public. See In
re Hutchinson Technology Inc., 852 F.2d 552, 554, 7 UPQ2d
1490, 1492 (Fed. Cir. 1988), citing In re Kahan & Weisz
Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (CCPA 1975);
In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238
(CCPA 1975); and In re BDH Two, Inc., 26 USPQ2d 1556 (TTAB
1993). The initial burden is on the Trademark Examining
Attorney to establish a prima facie case that a mark is
primarily merely a surname. See In re Etablissements Darty
et Fils, 759 F.2d 15, 16, 225 USPQ 652, 653 (Fed. Cir.
1985). After the Trademark Examining Attorney establishes
a prima facie case, the burden shifts to the applicant to
rebut this finding.
The Board, in the past, has considered several
different factors in making a surname determination under
Section 2(e)(4): (i) the degree of surname rareness; (ii)
whether anyone connected with applicant has the surname;
(iii) whether the term has any recognized meaning other
than that of a surname; and (iv) the structure and
Serial No. 75/580,055
5
pronunciation or “look and sound” of the surname. In re
Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995).
There is no doubt that the Trademark Examining
Attorney has met her initial burden of establishing that
“Hockaday” would be perceived by consumers as primarily
merely a surname. In particular, the Trademark Examining
Attorney has cited almost eight hundred HOCKADAY surname
references from the PHONEDISC database, along with proof
that the word “Hockaday” does not appear in an English-
language dictionary. The Court of Appeals for the Federal
Circuit has held that this type of evidence is sufficient
to establish a prima facie surname case. See Hutchinson
Technology, 852 F.2d at 554, 7 USPQ2d at 1492; Darty, 759
F.2d at 16, 225 USPQ at 653; see also 2 J. Thomas McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, §13.30, p. 13-50 (4th
ed. 1999).
The Trademark Examining Attorney’s PHONEDISC evidence
is collected from telephone directories and address books
across the country. There is no magic number of directory
listings required to establish a prima facie surname case.
In re Cazes, 21 USPQ2d 1796, 1797 (TTAB 1991); In re
Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566
(TTAB 1988), aff’d unpublished decision, No. 89-1231 (Fed.
Cir. 1989). It is reasonable to conclude from these
Serial No. 75/580,055
6
submissions that HOCKADAY, while obviously not as common as
some other surnames, has had measurable public exposure.3
Even if HOCKADAY is an uncommon surname, it is by no means
a decidedly rare surname.4 From almost eight hundred
HOCKADAY surname references in the PHONEDISC database, we
conclude that HOCKADAY is a surname even if there are
relatively few people in the United States having this
name.
Applicant dismisses the hundreds of listings from the
PHONEDISC database as representing “less than seven in one
million” from among the American population. However, we
find this “percentage-of-the-entire-population” argument to
be a hollow reed. The rich diversity of surnames in this
country is amply reflected in the PHONEDISC computer

3 To the extent applicant contends that HOCKADAY is an
uncommon surname, we would point out that even uncommon surnames
may not be registrable on the Principal Register. See Industrie
Pirelli, 9 USPQ2d at 1566.
4 This evidence is far more significant than the number of
listings presented in other cases where the surname has been
categorized as “rare.” See e.g. Kahan & Weisz, 508 F.2d at 832,
184 USPQ at 422 (six DUCHARME surname telephone directory
listings); In re Sava Research Corp., 32 USPQ2d 1380 (TTAB
1994)(one hundred SAVA surname telephone directory listings);
Benthin Management, 37 USPQ2d at 1333 (one hundred BENTHIN
surname telephone directory listings); In re Garan, Inc., 3
USPQ2d 1537 (TTAB 1987)(six GARAN telephone directory listings
and one NEXIS listing). This is one of four factors. Hence, the
quantum of PHONEDISC evidence that may be persuasive for finding
surname significance in one case may be insufficient in another
because of differences in the surnames themselves and/or
consideration of the other relevant surname factors. Darty,
supra.
Serial No. 75/580,055
7
database evidence. If one were to take a statistical
measurement of this database for common names like “Smith”
or “Johnson,” each would constitute a relatively small
fraction of the total database content.
As to the second Benthin factor, the Trademark
Examining Attorney has demonstrated from applicant’s own
Web page that “Robert G. Hockaday, inventor of the Micro
Fuel Cell, incorporated Energy Related Devices in 1997 in
order to facilitate the development of his micro fuel cell
idea…” The text goes on to show that applicant has entered
into an exclusive contract with Mr. Hockaday’s ERD
corporation and that Mr. Hockaday is now the largest single
shareholder of applicant. Hence, that someone having the
surname Hockaday is behind this critical fuel cell
technology and continues to be associated with applicant
supports the position of the Trademark Examining Attorney
that members of the public will recognize this term as a
surname.
In weighing the third Benthin factor, we note
applicant’s contention that “Hockaday” has recognized
meanings other than that of a surname. However, as
correctly pointed out by the Trademark Examining Attorney,
because this entry was an exhibit attached to applicant’s
Serial No. 75/580,055
8
appeal brief, its submission was manifestly untimely. The
record must be complete prior to the time of the appeal.
See 37 CFR 2.142(d); In re Smith and Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994). Accordingly, we have not
considered this evidence in reaching our decision. We
hasten to add that even if we were to consider this
submission, it would not change the result herein. The
only entries submitted by applicant to support this
contention shows a different term, “hock day.” The Benthin
decision and our primary reviewing court clearly require
that other meanings be “recognized” by a significant number
of people. See Harris-Intertype, supra; Benthin
Management, supra. Because applicant has actually found a
different word, even if we considered this submission, it
could not possibly rebut the Trademark Examining Attorney’s
prima facie surname case.
As to the fourth Benthin factor, contrary to
applicant’s contention, it is the view of the Board that
HOCKADAY has the structure and pronunciation of a surname,
not of an arbitrary designation. See Garan, 3 USPQ2d at
1538; Industrie Pirelli, 9 USPQ2d at 1566. In fact,
judging this matter simply by its look and feel, HOCKADAY
seems to fit the archetype of British surnames, such as
Holliday, Holladay, Canaday, Faraday, Doubleday, et al.
Serial No. 75/580,055
9
Finally, as noted earlier, the entirety of the mark
sought to be registered is HOCKADAY FUEL CELL. We must
consider what the purchasing public would think when
confronted with this mark as a whole.5 The entire record
herein, beginning with the identification of goods, shows
that “Fuel Cell” is a generic designation for these goods,
and applicant has correctly agreed to disclaim this term.
The term “Fuel Cell” adds nothing to the registrability of
a mark applied to fuel cells, fuel cell tanks and fuel cell
chemical fuels. Hence, when placing a surname in front of
a generic designation for the goods, the primary
significance of the resulting composite is still merely
that of a surname. See In re Pickett Hotel Co., 229 USPQ
760 (TTAB 1986).
Decision: The refusal to register the mark HOCKADAY
FUEL CELL under Section 2(e)(4) is affirmed.

5 In re Standard Elektrik Lorenz Aktiengesellschaft, 371 F.2d
870, 873, 152 USPQ 563, 566 (CCPA 1967).