Maxilon Laborator-ies, Inc.

Trademark Trial and Appeal Board

Mar 9, 2005

No. 78248647 (T.T.A.B. Mar. 9, 2005)

Mailed: March 9, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Maxilon Laboratories, Inc.
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Serial No. 78248647
_______

Norman P. Soloway of Hayes Soloway P.C. for Maxilon
Laboratories, Inc.

Steven W. Jackson, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An intent-to-use application has been filed by Maxilon
Laboratories, Inc. to register the mark shown below,

for surgical instruments for removing and collecting hard
tissue, namely, curettes.”1

1 Application Serial No. 78248647, filed May 12, 2003.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78248647
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 examining attorney have filed
briefs. An oral hearing was not requested.
We affirm the refusal to register.
In support of the surname refusal, the examining
attorney has made of record the results of his search of
the LEXIS-NEXIS USFIND database, finding 1825 “Ebner”
surname listings. In addition, the examining attorney made
of record six Internet printouts showing usage of “Ebner”
as a surname. These printouts refer to a Scientology
author; a German mystic; an artist; a physician; a
professor; and a musician, all of whom bear the “Ebner”
surname.
Finally, the examining attorney made of record pages
from Webster’s New World Dictionary and Merriam-Webster’s
Geographical Dictionary showing no listings for “ebner.”
It is the examining attorney’s position that the foregoing
evidence makes out a prima facie showing that EBNER is
primarily merely a surname.
Ser No. 78248647
3
Applicant, in urging that the refusal be reversed,
maintains that the examining attorney’s evidence is not
sufficient to establish a prima facie surname case.
Applicant argues that “Ebner” is an extremely rare surname
since the USFIND database contains over 123 million
listings and the 1825 “Ebner” listings constitute a mere
0.000014%. Further, applicant argues that “ebner” has non-
surname significance, that is, “ebner” has significance in
the medical field as a component of the medical terms
“Ebner’s glands” and “Ebner’s reticulum.” In this regard,
applicant submitted the following definitions from an
online medical dictionary:
Ebner’s Glands: Serous glands of the tongue
opening in the bottom of the trough surrounding
the circumvallate papillae.

Ebner’s Reticulum: A network of nucleated cells
in the seminiferous tubules.

Also, applicant argues that “‘ebner’ is a coined term
related to a German class of words with the root ‘eben’
meaning ‘planar’” and that “‘ebner’ is commonly used in the
German language to mean the same.” (Brief, p. 7). In this
regard, applicant has submitted an excerpt from a
German/English online translation service which shows that
the German word “ebener” translates to “level surface” in
English; and copies of various Internet printouts of
Ser No. 78248647
4
articles written in German. Applicant has provided an
English translation of the German phrases wherein the word
“ebner” appears. For example, “aus ebner Ferne” translates
to “from a level distance”; “ebner Erde” translates to
“level earth”; “ein ebner Spiegel” translates to “a planar
mirror.” Finally, applicant argues that its mark is not
simply EBNER, but rather EBNER in a highly stylized form
and that the PTO has registered other marks that are also
surnames for goods in the medical and dental fields.
Applicant submitted copies of such registrations.
It is well settled that whether a mark is primarily
merely a surname depends upon whether its primary
significance to the purchasing public is that of a surname.
In re Hutchinson Technology Inc., 852 F.2d 552, 554, 7
USPQ2d 1490, 1492 (Fed. Cir. 1988), citing In re Kahan &
Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (CCPA
1975) and In re Harris-Intertype Corp., 518 F.2d 629, 186
USPQ 238 (CCPA 1975). The burden is upon the examining
attorney, in the first instance, to present evidence
sufficient to make out a prima facie showing in support of
the contention that the mark is primarily merely a surname.
In re Etablissements Darty et Fils, 759 F.2d 15, 16, 225
USPQ 652, 653 (Fed. Cir. 1985). Provided that the
examining attorney establishes a prima facie case, the
Ser No. 78248647
5
burden shifts to the applicant to rebut the showing made by
the examining attorney. Whether a term sought to be
registered is primarily merely a surname within the meaning
of Section 2(e)(4) of the Trademark Act must necessarily be
resolved on a case by case basis, taking into account a
number of factual considerations. In re Sava Research
Corp., 33 USPQ2d 1380 (TTAB 1984).
There is no doubt that the examining attorney has met
his initial burden of establishing that EBNER would be
perceived by purchasers as primarily merely a surname. In
particular, the examining attorney has referenced 1825
EBNER surname entries from the USFIND database. These
listings are spread throughout the United States. 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.
Although applicant argues that the number of listings
is extremely small, 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). Also, as previously noted, the examining
Ser No. 78248647
6
attorney has made of record six Internet printouts
referencing individuals with the EBNER surname. We find
that the examining attorney has presented sufficient
evidence to make out a prima facie showing that EBNER is
primarily merely a surname.
We have carefully considered applicant’s arguments and
evidence but are not persuaded that applicant has rebutted
the examining attorney’s prima facie showing that EBNER is
primarily merely a surname. With respect to applicant’s
contention that “Ebner” has significance in the medical
field, it is apparent from the dictionary excerpt below
that “Ebner’s gland” and “Ebner’s reticulum” are named
after an individual with the Ebner surname (emphasis in
original):
Ebner’s gland, line, reticulum [Victor Ebner von
Rofenstein, Austrian histologist, 1842-1925].
Dorland’s Medical Dictionary (2002)2

Further, a review of the entries in this medical dictionary
reveals that it is quite common in the medical field for
human anatomical parts, diseases, vaccines, etc. to be
named after people, e.g., Hensing’s ligament; Herbst’s
corpuscles; Lenz’s syndrome; and Salk vaccine. In view

2 The Board may take judicial notice of dictionary definitions.
B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727,
6 USPQ2d 1719 (Fed. Cir. 1988).
Ser No. 78248647
7
thereof, purchasers who are familiar with Ebner’s gland and
Ebner’s reticulum will immediately understand that EBNER is
a surname, such that when it is used with curettes its
primary significance will be as a surname. Purchasers will
still see that the human anatomical parts were named after
the person with the “Ebner” surname. See e.g., In re
Harris-Intertype Corporation, 186 USPQ at 239 [The various
uses of “Harris” as the name of a place or item is
insufficient to rebut the examining attorney’s prima facie
showing that HARRIS is primarily merely a surname; such
uses may represent the normal naming of a place or other
item after an individual]. In short, the fact that “Ebner”
is used in these medical terms does not dissipate its
primary significance as a surname.
With respect to applicant’s contention that “Ebner” is
a “coined” German term (which we regard as an argument that
EBNER would be viewed as a variation of the German word
“ebener”), there is simply no indication that a significant
number of purchasers of applicant’s type of goods would
have sufficient familiarity with the German language that
“Ebner” would be perceived as a German term or variation of
a German word.
In addition, we are not persuaded that the style of
lettering in this case is so distinctive that EBNER would
Ser No. 78248647
8
not be perceived as primarily merely a surname. The use of
stylized letters in trademarks is quite common and the
presentation of a surname in lower case letters is not
particularly unusual. The letters are readily discernible
and the style of lettering is not so distinctive as to
create a separate commercial impression in the minds of the
purchasers of applicant’s goods. The term, although in
stylized letters, would still be perceived as a surname.
See In re Pickett Hotel Company, 229 USPQ 760, 763 (TTAB
1986) [“The style of lettering … is clearly not so
distinctive as to create any separate commercial impression
in the minds of purchasers.”]
An additional factor which weighs in favor of finding
that EBNER would be perceived as primarily merely a surname
is that one of applicant’s founders is named Peter Ebner.
When someone associated with an applicant has the surname,
this tends to indicate the public’s recognition of the term
as a surname. See In re Benthin Management, 37 USPQ2d 1332
(TTAB 1995) and In re Monotype Corp. PLC, 14 USPQ2d 1070
(TTAB 1989).
As previously noted, applicant submitted copies of
third-party registrations of marks that it maintains are
surnames for goods in the medical and dental fields.
According to applicant, the marks that appear in these
Ser No. 78248647
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registrations appear more frequently as surnames in the
USFIND database than “Ebner.” We would again point out
that no magic number of directory listings is required to
establish a prima facie surname case. Moreover, we note
that several of the marks in these registrations are not
primarily merely surnames because they are also given
names, e.g., “Felix”, “Lucy”; “Caesar”; and “Oscar.” In
any event, it is well settled that each case must be
decided on its own merits. We are not privy to the records
in the files of the cited registrations, and more
importantly, the Board is not bound by prior actions of the
Office. See In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 [“Even if some prior registrations had
some characteristics similar to [applicant’s] application,
the PTO’s allowance of such prior registrations does not
bind the Board or this court.”].
Decision: The refusal to register under Section
2(e)(4) is affirmed.