Mars, Inc.

Trademark Trial and Appeal Board

Oct 22, 2001

EX (T.T.A.B. Oct. 22, 2001)

10/22/01 Paper No. 11
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mars, Incorporated
________

Serial No. 75/665,489
Serial No. 75/665,491
_______

Leslie K. Mitchell of Fitzpatrick, Cella, Harper & Scinto
for Mars, Incorporated.

Darryl M. Spruill, Trademark Examining Attorney, Law Office
101 (Jerry Price, Managing Attorney).
_______

Before Seeherman, Chapman and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
Two applications have been filed by Mars, Incorporated
to register two different marks on the Principal Register,
consisting of or including the word KENMAN. Both
applications are for goods identified as “confectionery,
namely, candy”; and both were filed on March 22, 1999,
based on applicant’s assertion of a bona fide intention to
use the mark in commerce.
In application Serial No. 75/665,489 applicant seeks
to register the mark KENMAN (typed drawing); and in
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 75/665489 and 75/665491
2
application Serial No. 75/665,491 applicant seeks to
register the mark shown below.

The Examining Attorney has refused registration in
each application under Section 2(e)(4) of the Trademark Act
on the basis that the mark (KENMAN or KENMAN and design) is
primarily merely a surname.
When the refusals were made final, applicant appealed
in each application. Both applicant and the Examining
Attorney have filed briefs. No oral hearing was requested
by applicant.
In view of the common questions of law and fact which
are involved in these two applications, and in the
interests of judicial economy, we have consolidated the
applications for purposes of final decision. Thus, we have
issued this single opinion.
The Examining Attorney contends that although the mark
KENMAN is a rare surname, the primary significance of the
mark to the purchasing public remains that of a surname;
that KENMAN has no other meaning; that KENMAN is similar in
structure and pronunciation to other surnames with a suffix
Ser. Nos. 75/665489 and 75/665491
3
ending of “—MAN” (that is, it “looks and sounds” like a
surname); and that there is no fixed formula for the amount
of evidence necessary for the Examining Attorney to
establish a prima facie case that a term is primarily
merely a surname. With regard to the mark which includes a
design feature, the Examining Attorney contends that the
oval and black border design is merely a background of
basic geometric shapes; that it is not inherently
distinctive and does not form a separate commercial
impression from the word KENMAN; that it is not so uncommon
or unusual that the purchasing public would rely on the
design to differentiate applicant’s goods from those of
others; and that the purchasing public would still perceive
the mark as primarily merely a surname.
In support of his position, the Examining Attorney
submitted the following evidence: (1) a printout from the
Phonedisc Powerfinder USA One 1998 (4th edition) database
showing “5 hits for the name ‘KENMAN’” (First Office
action, p. 2) of the 115 million surnames in the Phonedisc;
(2) ten excerpted stories retrieved from the Nexis database
(from a total of 40 stories), all indicating “surname use
of Kenman” (Final Office action, p. 2); and (3) photocopies
of pages from Merriam-Webster’s Collegiate Dictionary
(Tenth Edition 1998) and Merriam-Webster’s Geographical
Ser. Nos. 75/665489 and 75/665491
4
Dictionary (Third Edition 1998) which lack any entry for
the word KENMAN.
Applicant contends, on the other hand, that “KENMAN is
an extremely rare surname” (brief, p. 3) as shown by the
few instances of surname use submitted by the Examining
Attorney; that the legislative history of the Trademark Act
indicates that the degree of rarity of the surname is
material to the determination of whether a term is
primarily merely a surname; that many English words and
geographical terms end in “—MAN” but are not regarded as
surnames, such as fireman, Doberman, woman, German,
snowman, chairman, human, Pitman in New Jersey, Quitman in
Georgia, Boardman in Ohio, and Naaman in Delaware; that the
Examining Attorney has not submitted any evidence which
demonstrates how the public would perceive the mark; that
the Examining Attorney has not met his burden of proof to
establish that the term KENMAN is primarily merely a
surname; that the records in the cases cited by the
Examining Attorney generally contained a more substantial
evidentiary record; and that doubt should be resolved in
favor of applicant.
Applicant further contends, with specific regard to
the mark which includes a design, that the Examining
Attorney has improperly dissected that mark in considering
Ser. Nos. 75/665489 and 75/665491
5
the question of registrability; that the design feature is
distinctive; that there is not only a design but also
stylized lettering; and that the entire mark, when
considered as a whole, is not primarily merely a surname.
Applicant submitted photocopies of several third-party
registrations, all of which are on the Principal Register,
are not listed as registering under Section 2(f), and all
of which are for marks ending in the suffix “—MAN,” e. g.,
JOROMAN, BOTMAN, BARSAMAN, and ORTMAN FLUID POWER (“fluid
power” disclaimed).
It is well established that the USPTO has the burden
of establishing a prima facie case that a mark is primarily
merely a surname, and that the test for determining whether
a mark is primarily merely a surname is the primary
significance of the mark as a whole to the purchasing
public. See In re BDH Two Inc., 26 USPQ2d 1556 (TTAB
1993), and cases cited therein. We are of the opinion that
the Examining Attorney has not met that burden here, and
further, that applicant has rebutted the Office’s evidence.
The five Phonedisc listings submitted by the Examining
Attorney actually consist of the following: three
residential listings for the surname KENMAN (Dennis in
Tucson, AZ, and L.S. and Leon F., both at the same address
in Glendale, AZ); one listing for a business, “Kenman
Ser. Nos. 75/665489 and 75/665491
6
Management Svc” (in FL); and one listing for “Kenmanivong,
Bounthazy” (in FL). Thus, there are only three surname
listings for KENMAN out of a database of 115 million
listings.
One of the ten excerpted stories retrieved from the
Nexis database refers to Leon F. Kenman in Glendale, AZ.
Thus, that is a repeat of one of the listings from
Phonedisc. The remaining nine entries from Nexis refer to
individuals with the surname KENMAN in the context of lists
of names from obituaries, bankruptcies, players of sports
contests, winners of ribbons at fairs, election ballots,
and the like.
In the past, and specifically prior to the
availability of Phonedisc, when an Examining Attorney
refused registration based on a finding that the term was
primarily merely a surname, the Examining Attorney
generally had to utilize telephone books, and extrapolate
that if there were a certain number of residential listings
for a particular surname in one book then there would be
more in the other telephone books which were not checked.
However, since the advent of Phonedisc, it is presumed that
checking that database is the equivalent of checking
virtually all phone books.
Ser. Nos. 75/665489 and 75/665491
7
Likewise, the Nexis database is a massive electronic
library, and in this case, the Examining Attorney’s search
of the term “KENMAN” retrieved a total of 40 stories, ten
of which the Examining Attorney submitted into the record,
and one of which was a repeat of an individual listed in
the Phonedisc report. Thus, there are nine stories from
Nexis, showing additional individuals named KENMAN, again a
minimal number considering the size of the electronic
database being searched. Of course, we can only speculate
as to why individuals whose names were shown in the nine
stories retrieved from Nexis were not listed in the
Phonedisc report (for example, perhaps the individuals did
not have telephones, or the individuals died prior to the
date of the Phonedisc compilation, or perhaps, as in one
story, the Nexis story was published subsequent to the date
of the Phonedisc search report).
In any event, with a combined total of twelve KENMAN
listings from these two massive electronic databases, it is
very clear that KENMAN is an extremely rare surname. The
rarity of the surname is material to our decision because
the more rare the surname, the less likely the purchasing
public will be aware that the term is a surname, and thus,
the less likely the term is “primarily merely” a surname
and prohibited from registration by the Trademark Act. See
Ser. Nos. 75/665489 and 75/665491
8
Ex parte Rivera Watch Corporation, 106 USPQ 145 (Comm.
1955); and In re Garan, 3 USPQ2d 1537 (TTAB 1987). See
also, In re The Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB
1989); and 2 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, §§13:27-13:30 (4th ed. 2001).
Next, we consider whether KENMAN has the “structure
and pronunciation” of a surname, a decidedly subjective
matter. See In re Industrie Pirelli, 9 USPQ2d 1564 (TTAB
1988). Although it is obvious that surnames can end in
“—MAN,”1 applicant has provided evidence that numerous
English words and geographic words which end in “—MAN” are
not surnames. Moreover, there is no evidence showing that
surnames are typically constructed by combining a first
name with the suffix “—MAN.” As a result, we cannot
conclude that the word KENMAN has the “look and sound” of a
surname.
The Examining Attorney did not inquire and applicant
offers no information as to whether KENMAN is the surname
of anyone connected with applicant. The individual who
executed the applications is not named KENMAN. Therefore,
there is no information of record on this point.

1 Indeed, this panel of judges could scarcely contend otherwise.
Ser. Nos. 75/665489 and 75/665491
9
We have considered the Examining Attorney’s evidence
to show that the word KENMAN does not appear in a
dictionary or a geographical dictionary, but in the overall
circumstances and record of these applications, especially
relating to the extreme rarity of uses of the word KENMAN
as a surname, the evidence offered to prove a negative is
simply not persuasive of a different result.
Inasmuch as we find that the evidence does not support
a prima facie case the word KENMAN is primarily merely a
surname, certainly the word presented in stylized lettering
and with a design feature would likewise not be primarily
merely a surname.
Decision: The refusal to register under Section
2(e)(4) is reversed in each application.