Maslyukov

Trademark Trial and Appeal Board

Sep 17, 2008

No. 77107926 (T.T.A.B. Sep. 17, 2008)

Mailed: September 17, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Maslyukov
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Serial No. 77107926
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Pavel Maslyukov, pro se.

Esther A. Belenker, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
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Before, Hairston, Walsh and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Pavel Maslyukov has filed an application to register
the mark HAIG (in standard character form) for goods
ultimately identified as “whisky.”1 Registration has been
finally refused pursuant to Section 2(e)(4) of the

1 Application Serial No. 77107926, filed on February 15, 2007,
which alleges a date of first use anywhere and in commerce as
early as July 1, 2001. The application contains a statement that
“[t]he name shown in the mark does not identify a particular
living individual.”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77107926
2
Trademark Act, 15 U.S.C. 1052(e)(4), on the ground that the
mark is primarily merely a surname.
Applicant has appealed; applicant and the trademark
examining attorney have filed briefs.
Whether a term is primarily merely a surname depends
on the primary significance of the term to the purchasing
public. In re Harris-Intertype Corp., 518 F.2d 629, 186
USPQ 238 (CCPA 1975); and In re Champion International
Corp., 229 USPQ 550 (TTAB 1985). The examining attorney
bears the burden of establishing a prima facie case in
support of the conclusion that the primary significance of
the term to the purchasing public would be that of a
surname. In re BDH Two Inc., 26 USPQ2d 1556 (TTAB 1993)
and cases cited therein. If a prima facie case is
presented, then the burden of rebutting that showing shifts
to the applicant. In re Etablissements Darty et Fils, 759
F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); and In re Harris-
Intertype Corp., supra.
“The question of whether a word sought to be
registered is primarily merely a surname within the meaning
of the statue can only be resolved on a case by case
basis,” taking into account various factual considerations.
Darty, 225 USPQ at 653. There are five accepted factors to
Ser No. 77107926
3
be considered in the analysis:
(1) Is the word a common or rarely used surname?
(2) Does anyone connected with the applicant have that
surname?
(3) Does the word have meaning other than as a
surname?
(4) Does the word look and sound like a surname?
(5) Is the word presented in use in a stylized form
distinctive enough to create a separate non-surname
significance?
In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-34
(TTAB 1995) [BENTHIN held not primarily merely a surname
because it was a rare surname, did not look and sound like
a surname, and was set forth in a highly stylized oval
design].
Because applicant seeks to register HAIG in standard
character form, the fifth factor is not a factor in this
case and we consider the record in light of the first four
factors.
As to the first factor, i.e., the rarity of HAIG as a
surname, we find the record sufficient to establish that
the surname is not a rare one. In this regard, the
examining attorney submitted several different types of
evidence. She submitted the results of a search of the “P-
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FIND” database which indicated that there were 732 entries
for the surname “Haig” and one-hundred of the entries were
made of record. Also, the examining attorney made of
record LEXIS/NEXIS printouts that show individuals
throughout the United States who have the surname “Haig.”
The individuals include several athletes; an Air Force
colonel; an actor; a pharmacist; a zookeeper; a CEO of a
corporation; an orchestra conductor; a school
superintendent; and Alexander Haig, retired General in the
U.S Army, former White House Chief of Staff under President
Nixon, and former U.S. Secretary of State under President
Reagan.
With respect to Alexander Haig, we believe it is
reasonable to conclude that large numbers of individuals in
the United States would be exposed to the name of a General
and top official in two presidential administrations in
news reports on military and government activities. This
leads us to conclude that the name HAIG may be rare when
viewed in terms of frequency of use as a surname in the
general population, but not at all rare when viewed as a
name repeated in the media in terms of public perception.
See In re Gregory, 70 USPQ2d 1792, 1795. [The existence of
two elected officials with the surname ROGAN led the Board
to conclude that “the name may be rare when viewed in terms
Ser No. 77107926
5
of frequency of use as a surname in the general population,
but not at all rare when viewed as a name repeated in the
media and in terms of public perception.”]. Accordingly,
we conclude that HAIG is not a rare surname. Moreover, we
note that 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).
Also, there is no minimum number of listings needed to
prove that mark is primarily merely a surname.
As to the second factor, i.e., whether any individual
connected with applicant has the surname in question, there
is nothing in the record either way on this factor and we
can assume that no individual connected with applicant is
named HAIG. As explained in Gregory, supra, however, this
does not aid applicant and only means that the factor is
neutral. Gregory, 70 USPQ2d at 1795.
The third factor we consider is whether the term HAIG
has non-surname significance. In connection with this
factor, applicant first argues that HAIG identifies Scotch
whisky produced by the Haig family in Scotland. In this
regard, applicant referenced a website and submitted a
photograph downloaded from this website which shows a
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building described as “Former headquarters of John Haig &
Sons whisky.” This argument, however, is not well taken
inasmuch as applicant seeks registration on the Principal
Register without resort to Section 2(f). See In re Cazes,
21 USPQ2d 1796 (TTAB 1991) [Applicant argued that LIPP or
BRASSERIE LIPP no longer primarily merely a surname because
the significance of the term is now that of a mark for her
restaurant; argument rejected because applicant did not
seek registration under Section 2(f)].2
Applicant next argues, in connection with this factor,
that the term HAIG has historical significance, i.e., it
identifies the British General Douglas Haig. The record
shows that British General Douglas Haig commanded British
troops on the Western Front for most of World War One.
Decisions concerning historical names generally draw a
line between names which are so widely recognized that they
are almost exclusively associated with a specific
historical figure and are thus not considered primarily a
surname, e.g., Lucien Piccard Watch Corp. v. Crescent
Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) [DA

2 We note that the examining attorney, in her first Office
action, advised applicant concerning registration of a surname
under Trademark Act Section 2(f). Applicant, in response
thereto, stated that “[t]he grounds cannot be provided to let
this trademark be registered under Trademark Section 2(f).”
(June 7, 2007 response, p. 1).
Ser No. 77107926
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VINCI not primarily merely a surname because it primarily
connotes Leonardo Da Vinci], and names which are only semi-
historical in character and thus can be perceived as
primarily merely a surname, e.g. Frances Rothschild, Inc.
v. U.S. Cosmetic Fragrance Marketing Corp., 223 USPQ 817
(N.D. Tex. 1983) [ROTHSCHILD held primarily merely a
surname despite being the surname of a historical banking
family]; and In re Champion International Corp., supra
[MCKINLEY held primarily merely a surname despite being the
surname of a deceased president].
In this case, we find that British General Douglas
Haig is at best a semi-historical figure and, therefore,
the significance of such name is not so great as to eclipse
the surname significance of the term.
We turn, then, to the fourth and final factor to be
discussed, i.e., whether HAIG has the look and sound of a
surname. When a term does not have the look and sound of a
surname, it clearly favors the applicant. On the other
hand, when it does look and sound like a surname, such a
finding merely tends to reinforce a conclusion that the
term’s primary significance is as a surname. HAIG does not
have the look or sound of an initialism or acronym; nor
does it appear to be a coined term. Rather, the term HAIG
“appears to be a cohesive term with no meaning other than
Ser No. 77107926
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as a surname.” In re Gregory, supra at 1796. Further, the
existence of individuals with the name HAIG tends to
reinforce the conclusion that HAIG has the look and feel of
a surname.
An additional argument made by applicant requires
comment. Applicant maintains that it is entitled to
registration of the mark HAIG because the USPTO previously
issued Registration No. 359367 for the mark HAIG & HAIG.
According to applicant, the registration is now
“abandoned.” Apart from the fact that applicant failed to
make a copy of this registration of record, even assuming
that the USPTO issued such registration, it does not
entitle applicant to registration of the mark HAIG in this
case. The Board’s task in this appeal is to determine,
based on the record before us, whether applicant’s mark
HAIG is primarily merely a surname. Each case must be
decided on its own merits. Moreover, the determination of
registrability of a particular mark by an examining
attorney cannot control our decision in the case now before
us. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) [“Even if some prior
registrations had some characteristics similar to
(applicant’s application), the PTO’s allowance of such
Ser No. 77107926
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prior registrations does not bind the Board or this
court.”]
In sum, when we consider the evidence as a whole, we
find that the USPTO has made out a prima facie case that
HAIG is primarily merely a surname and that applicant has
not rebutted this prima facie case.
Decision: The refusal to register is affirmed.