Masco Builder Cabinet Group

Trademark Trial and Appeal Board

Jun 15, 2009

No. 77309908 (T.T.A.B. Jun. 15, 2009)

Mailed:
June 15, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Masco Builder Cabinet Group
________

Serial No. 77309908
_______

Edgar A. Zarins of Masco Corporation of for Masco Builder
Cabinet Group.

Dominic J. Ferraiuolo, Trademark Examining Attorney, Law
Office 102 (Karen M. Strzyz, Managing Attorney).
_______

Before Bucher, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Masco Builder Cabinet Group (applicant) seeks
registration on the Principal Register of the mark
MERIWETHER (in standard character form) for goods
identified in the application as “cabinetry.”1

1 Serial No. 77309908, filed on October 22, 2007. The
application is based on applicant’s asserted bona fide intention
to use the mark in commerce. Trademark Act Section 1(b), 15
U.S.C. §1051(b).
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 77309908
2
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark is primarily merely a surname, and thus unregistrable
pursuant to Trademark Act Section 2(e)(4), 15 U.S.C.
§1052(e)(4).
Applicant has appealed the final refusal. Applicant
and the Trademark Examining Attorney filed briefs on
appeal.
After careful consideration of the evidence of record
and the arguments of counsel, we affirm the refusal to
register.
Section 2(e)(4) of the Trademark Act precludes
registration of a mark on the Principal Register which is
“primarily merely a surname.” The Office bears the initial
burden to make a prima facie showing that the mark is
primarily merely a surname. In re Etablissements Darty et
Fils, 222 USPQ 260 (TTAB 1984), aff’d, 759 F.2d 15, 225
USPQ 652 (Fed. Cir. 1985). If that prima facie showing is
made, then we must go on to determine whether the other
evidence in the record overcomes the prima facie showing,
i.e., whether the evidence as a whole supports a finding
that the mark is primarily merely a surname. Id.; In re
Yeley, 85 USPQ2d 1150 (TTAGB 2007). If there is any doubt,
we resolve the doubt in favor of applicant. In re Yeley,
Ser. No. 77309908
3
supra; In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB
1995).
In this case, we find that the evidence establishes,
prima facie, that MERIWETHER is primarily merely a surname.
We further find that the evidence, as a whole, establishes
that MERIWETHER is primarily merely a surname.
In the case of In re Benthin Management GmbH, supra,
the Board identified five factors to be considered 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; (4) whether the mark has the look and sound
of a surname; and (5) whether the stylization of the mark,
as depicted in the application, overcomes the mark’s
surname significance in the mark’s commercial impression.
We turn first to the evidence which establishes, prima
facie, that MERIWETHER is primarily merely a surname.
Under the first Benthin factor (relative rareness of
the surname), the Trademark Examining Attorney has made of
record printouts from the online telephone directory
Whitepages.com, showing that there are “over 300” listings
for persons with the surname MERIWETHER in the United
States. Although it appears from this evidence that
Ser. No. 77309908
4
MERIWETHER is not a common surname, we find that it is not
an especially rare surname, either, for purposes of the
first Benthin factor. Applicant does not contend
otherwise. This factor tends to weigh in favor of a
finding that MERIWETHER is primarily merely a surname.
Under the fourth Benthin factor, we find that
MERIWETHER looks and sounds like a surname. On its face,
it does not look like a coined term or an acronym, nor like
anything else but a surname. This factor weighs in favor
of a finding that MERIWETHER is primarily merely a surname.
Relatedly, under the fifth Benthin factor, the mark is
depicted in the application in standard character form,
without any stylization or design element that might add to
or otherwise alter the mark’s commercial impression as that
of a surname. The fifth factor is effectively neutral.
Based on these findings, we find, prima facie, that
MERIWETHER is primarily merely a surname. MERIWETHER,
depicted in standard character form, looks like a surname,
and it in fact is a surname.
We turn next to the other Benthin factors, to
determine whether the evidence as a whole supports or
rebuts our prima facie finding that MERIWETHER is primarily
merely a surname.
Ser. No. 77309908
5
Under the second Benthin factor, there is no evidence
that anyone connected with applicant has the surname
MERIWETHER. Although this factor therefore does not weigh
in support of a finding that the mark is primarily merely a
surname, neither does it weigh against such a finding.
This factor is neutral. See In re Thermo LabSystems Inc.,
85 USPQ2d 1285 (TTAB 2007); In re Gregory, 70 USPQ2d 1792
(TTAB 2004).
The remaining Benthin factor is the third factor,
under which we consider whether the mark has any recognized
meaning or significance other than its surname
significance.
Applicant has presented evidence (discussed below)
which shows that MERIWETHER has a non-surname significance
as the first name of Meriwether Lewis of the Lewis and
Clark Expedition, and a non-surname significance as the
name of the Meriwether National Golf Club, located outside
of Portland, Oregon.2 Citing this evidence, applicant
argues that “[a]ll of these alternative meanings for the
term MERIWETHER support the contention that the mark is not
merely a surname. While the Examining Attorney has

2 Applicant also contends that there is a band named Meriwether
which has a national recording contract and tours frequently
across the nation. However, applicant has submitted no evidence
to support this contention.

Ser. No. 77309908
6
provided examples of Meriwether as a surname, the foregoing
establishes that the mark is not merely a surname, that is,
other common usages exist.” (Applicant’s brief at
unnumbered page 1; emphasis in original.)
Before we reach the evidence itself, we must note that
applicant misapprehends the standard for determining
whether a mark is primarily merely a surname. To make that
determination, we must determine what the primary
significance of the mark would be to the purchasing public.
“This court has recognized that section 2(e)(3) [now
Section 2(e)(4)] is difficult to apply in determining
whether a mark is primarily merely a surname. However, we
are of the opinion that a correct resolution of the issue
can be made only after the primary significance of the mark
to the purchasing public is determined….” In re Kahan &
Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421, 422
(CCPA 1975). Contrary to applicant’s argument, the mere
existence of other non-surname meanings of the mark does
not preclude a finding that the mark is primarily merely a
surname. “To be considered primarily merely a surname, a
term does not have to be devoid of any non-surname
significance.” In re Isabella Fiore LLC, 75 USPQ2d 1564,
1567 (TTAB 2005). The question is not whether a mark
having a surname significance might also have a non-surname
Ser. No. 77309908
7
significance, but rather whether that non-surname
significance is the mark’s primary significance to the
purchasing public, thus eclipsing and relegating the mark’s
surname significance to secondary rather than primary
status. “Thus the determining factor is the primary (not
secondary) significance to the public….” In re Harris-
Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA
1975).
With this standard in mind, we now turn to applicant’s
contention that there are two other recognized meanings of
MERIWETHER (Meriwether Lewis, and Meriwether National Golf
Club) which overcome the Office’s showing that MERIWETHER
is primarily merely a surname.
Applicant has submitted a printout, from the online
encyclopedia Wikipedia, of an entry for “Meriwether Lewis,”
which identifies him and discusses his role as one of the
leaders of the 1804-1806 Lewis and Clark Expedition, which
explored the territory of the Louisiana Purchase. We find,
however, that even if consumers might be familiar with the
Lewis and Clark Expedition, there is no evidence that they
are familiar with the fact that Lewis’ first name was
Meriwether, much less any evidence that they would
recognize or refer to Meriwether Lewis simply by his first
name. In any event, we find that Meriwether Lewis is not
Ser. No. 77309908
8
an historical figure of such extraordinary renown that
consumers, upon seeing MERIWETHER, would understand it
primarily as identifying the historical figure himself,
rather than primarily as a surname. In this respect, this
case is distinguishable from other surname cases involving
the names of renowned historical figures, like Lucien
Piccard Watch Corp. v. Since 1868 Crescent Corp., 314
F.Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970)(DA VINCI not
primarily a surname because it primarily connotes Leonardo
Da Vinci), and Michael S. Sachs Inc. v. Cordon Art B.V., 56
USPQ2d 1132 (TTAB 2000)(primary significance of M.C. ESCHER
is that of famous deceased Dutch artist, not as a surname).
For these reasons, we find that the primary surname
significance of MERIWETHER is not eclipsed or overcome by
its non-surname significance as the first name of
Meriwether Lewis, assuming that this non-surname
significance would even be recognized by consumers.
Applicant does not appear to be arguing that
MERIWETHER is not primarily a surname because it is a
common given name, but we find that the evidence would not
support such a contention anyway. There is no evidence
that anyone has the given name MERIWETHER aside from
Meriwether Lewis. And even as to Meriwether Lewis, the
Wikipedia article submitted by applicant reveals that
Ser. No. 77309908
9
Meriwether Lewis’ mother was named Lucy Meriwether, and
that his given name therefore in fact was derived from a
surname. Cf. In re Harris-Intertype Corp., supra
(dictionary evidence that HARRIS is used as a given name is
mitigated by the fact that the given name is derived from a
surname). If MERIWETHER has any recognized significance as
a given name, such significance is not its primary
significance.
Applicant also has submitted a printout of the home
page of the website of Meriwether National Golf Club, which
is located outside of Portland, Oregon. We will assume,
favorably to applicant, that the golf club is not named
after someone with the surname Meriwether. However, there
is no evidence that shows that this golf club is well-known
by consumers, even among golf fans. We find that this non-
surname significance of MERIWETHER, assuming that it is
recognized by consumers at all, is much too obscure to
support a finding that it, rather than the surname
significance of MERIWETHER, is the primary significance of
MERIWETHER.
For these reasons, we find on this record that there
are no recognized non-surname meanings of MERIWETHER which
eclipse its primary surname significance. The third
Ser. No. 77309908
10
Benthin factor weighs in favor of a finding that MERIWETHER
is primarily merely a surname.
Having considered all of the evidence of record, and
for the reasons discussed above, we conclude that
MERIWETHER is primarily merely a surname, and that
registration of the mark on the Principal Register
therefore is barred by Section 2(e)(4) of the Trademark
Act.

Decision: The refusal to register is affirmed.