Merillat Industries, Inc.

Trademark Trial and Appeal Board

Mar 18, 2004

No. 76357510 (T.T.A.B. Mar. 18, 2004)

Mailed:
March 18, 2004
Paper No. 9
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Merillat Industries, Inc.
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Serial No. 76357510
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Edgar A. Zarins of Masco Corporation for Merillat
Industries, Inc.
Wendy B. Goodman, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
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Before Seeherman, Hohein and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark TOWNLEY (in typed form) for goods identified in
the application, as amended, as “cabinetry, namely, kitchen
and bathroom cabinets and cabinet doors.”1
The Trademark Examining Attorney has refused
registration of applicant’s mark on the ground that it is
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76357510
2
primarily merely a surname. See Trademark Act Section
2(e)(4), 15 U.S.C. §1052(e)(4).
When the refusal was made final, applicant filed this
appeal. Applicant and the Trademark Examining Attorney
have filed main appeal briefs. Applicant did not file a
reply brief, and did not request an oral hearing. We
affirm the refusal to register.
In deciding whether or not a term is primarily merely
a surname and thus is unregistrable under Section 2(e)(4),
we must determine the primary significance of the term to
the purchasing public. See In re Harris-Intertype Corp.,
518 F.2d 629, 186 USPQ 238 (CCPA 1975). The Office bears
the initial burden of establishing, prima facie, that the
primary significance of the term to the purchasing public
is merely that of a surname. If that prima facie showing
is made, then the burden of rebutting that showing, i.e.,
the burden of showing that the primary significance of the
term to the purchasing public is other than that of a
surname, shifts to applicant. See In re Etablissements
Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985);
In re Harris-Intertype Corp., supra; In re Kahan & Weisz
Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (CCPA 1975);
1 Serial No. 76357510, filed January 11, 2002. The application
is based on intent-to-use, under 15 U.S.C. §1051(b).
Ser. No. 76357510
3
In re Rebo High Definition Studio Inc., 15 USPQ2d 1314
(TTAB 1990); In re Luis Caballero, S.A., 223 USPQ 355 (TTAB
1984).
The determination as to whether the mark’s primary
significance to the purchasing public is that of a surname
takes into account various factors, such as: (i) the degree
of a surname’s rareness; (ii) whether anyone connected with
applicant has the surname in question; (iii) whether the
term in question has any recognized meaning other than that
of a surname; (iv) whether the term has the “look and
sound” of a surname; and (v) if the mark sought to be
registered is depicted in special form, whether the degree
of stylization of the mark is so great as to create a
separate commercial impression which renders the mark, as a
whole, not “primarily merely a surname.” See In re Benthin
Management GmbH, 37 USPQ2d 1332 (TTAB 1995).
Considering these factors in the present case, there
is no evidence that TOWNLEY is the surname of any person
connected with applicant, and that factor weighs in
applicant’s favor. However, all of the other four Benthin
factors support a finding that TOWNLEY is primarily merely
a surname.
First, we find that TOWNLEY is in fact a surname, and
that it is not an especially rare surname. The Trademark
Ser. No. 76357510
4
Examining Attorney has submitted evidence from the
PowerFinder (formerly known as PhoneDisc) electronic
database which shows that there are 1,741 U.S. residential
listings for the surname TOWNLEY. She also has submitted
the results of a search for TOWNLEY in the NEXIS database
(REGNWS library, ALLNWS file), which retrieved 4,653
stories in which the term appears. Excerpts from thirty-
seven of these stories were printed out and submitted, and
they refer to numerous different persons throughout the
country with the surname TOWNLEY.
Second, we also find that TOWNLEY has no recognized
non-surname significance. The Trademark Examining Attorney
has submitted a page from the Merriam-Webster Collegiate
Dictionary (10th ed. 1998) which shows that there is no
entry for “townley.” Applicant has presented no evidence
which would support a finding that there is any recognized
non-surname significance for the term.
Third, we find that TOWNLEY has the “look and sound”
of a surname. This is especially so given the fact that
many other common and/or famous surnames end in “LEY,” such
as Beardsley, Bentley, Greeley, Harley, Henley, Huxley,
Ripley, and McKinley.
Finally, because applicant seeks to register the mark
in typed form, the fifth Benthin factor (“the degree of
Ser. No. 76357510
5
stylization of the mark” is inapplicable in this case and
does not weigh in applicant’s favor.
For the reasons discussed above, we find that the
Trademark Examining Attorney has established, prima facie,
that the primary significance of TOWNLEY to the purchasing
public is that of a surname. We further find that
applicant has failed to rebut that prima facie showing by
demonstrating that the primary significance of the term is
other than that of a surname.
Decision: The refusal to register is affirmed.