Moen Inc.

Trademark Trial and Appeal Board

Mar 7, 2003

No. 78039367 (T.T.A.B. Mar. 7, 2003)

Mailed: March 7, 2003
Paper No. 9
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Moen Incorporated
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Serial No. 78/039,367
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Daniel C. McEachran of Cook, Alex, McFarron, Manzo,
Cummings & Mehler, Ltd. for Moen Incorporated.
Steven R. Berk, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Simms, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An intent-to-use application has been filed by Moen
Incorporated to register HAWTHORNE for “bath accessories,
namely towel bars, towel rings, robe hooks, toothbrush
holders, toilet tissue holders, soap dishes and cup
holders.”1
1 Serial No. 78/039,367 filed December 14, 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78/039,367
2
Registration has been refused under Section 2(e)(4) of
the Trademark Act on the ground that HAWTHORNE is primarily
merely a surname.
When the refusal to register was made final, applicant
appealed. Applicant and the Examining Attorney have filed
briefs.2 An oral hearing was not requested. We affirm the
refusal to register.
The Examining Attorney maintains that the primary
significance of HAWTHORNE to the purchasing public is that
of a surname. In support of the refusal, the Examining
Attorney made of record evidence from the REFERENCE ONE
data base showing that there are a total of 9,696
residential directory listings for persons whose surname is
“Hawthorne.” In addition, the Examining Attorney made of
record an excerpt from Eldon C. Smith, American Surnames 3
(1972), which characterizes “Hawthorne” as a “particularly
American surname;” an excerpt from the Random House
Unabridged Dictionary (2d ed. 1993) wherein the first
definition of “Hawthorne” is: “Nathaniel. 1804-64, U.S.
Novelist and short-story writer,” and the other two
definitions are for geographic places; and a
“representative sample” of sixteen stories out of 48,935
2 The current Examining Attorney was not the original Examining
Attorney in this case.
Ser No. 78/039,367
3
excerpts from the Nexis data base showing usage of
“Hawthorne” as a surname in current news and magazine
articles distributed to the general public. These articles
refer to a banker, a doctor, a football player, a police
officer and an actress, among others, who bear this
surname.
Applicant, in urging reversal of the refusal to
register, argues that HAWTHORNE has a recognizable non-
surname meaning or significance. It is applicant’s
position that the purchasing public would consider
HAWTHORNE to be a variation of the word “hawthorn” which is
the name of a spring-flowering shrub or tree. Because of
this meaning of “hawthorn,” applicant argues that
purchasers would associate the mark HAWTHORNE with the
“hawthorn” flower pattern, which appears on china. In
addition, applicant points out that no one associated with
it has the surname “Hawthorne,” and argues that HAWTHORNE
does not have the look and sound of a surname. Finally,
applicant maintains that the Office has registered three
other marks consisting of HAWTHORNE.
A term is primarily merely a surname if its primary
significance to the purchasing public is that of a surname.
In re Hutchison Technology, Inc., 852 F.2d 552, 7 USPQ2d
1490 (Fed. Cir. 1988); In re Industrie Pirelli Societa per
Ser No. 78/039,367
4
Azioni, 9 USPQ2d 1564 (TTAB 1988). The initial burden is
on the Patent and Trademark Office to establish a prima
facie case that the term is primarily a surname. In re
Establissments Darty et Fils, 759 F.2d 15, 225 USPQ 652
(Fed. Cir. 1985). 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,
supra.
The determination as to whether a 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; and (iv) whether the term has the “look and
sound” of a surname. See In re Benthin Management GmbH, 37
USPQ2d 1332 (TTAB 1995).
In this case, we find that the evidence made of record
by the Examining Attorney is sufficient to establish, prima
facie, that the primary significance of HAWTHORNE to the
purchasing public is that of a surname. In addition, we
find that applicant has failed to rebut that prima facie
Ser No. 78/039,367
5
showing by demonstrating that the primary significance of
HAWTHORNE is other than of a surname.
The 9,696 residential directory listings (spread
throughout the United States); the book and dictionary
excerpts; and the Nexis evidence submitted by the Examining
Attorney constitute a strong evidentiary showing that the
primary significance of HAWTHORNE to the purchasing public
is that of a surname.
We are not persuaded by applicant’s argument that the
purchasing public would consider HAWTHORNE to be a
variation of the word “hawthorn,” and thus not a surname.
Applicant offered no evidence in support of this argument,
and as the Examining Attorney pointed out in his brief, a
similar argument was rejected by this Board in In re
Pickett Hotel Co., 229 USPQ 76061 (TTAB 1986) [“We reject
the appellant’s argument that because the surname PICKETT
is the phonetic equivalent of the word “picket,” a word
describing a type of fence or a labor demonstrator, a prima
facie case has not been made out.”]
We recognize that “Hawthorne” is not the surname of
anyone connected to applicant. Of course, if “Hawthorne”
were the name of someone associated with applicant, it
could well indicate the public recognition of the term as a
surname. It is not the case, however, that because no one
Ser No. 78/039,367
6
associated with applicant has been shown to have the
“Hawthorne” surname, purchasers will perceive the term as a
non-surname.
Finally, despite applicant’s argument to the contrary,
we are of the view that HAWTHORNE has surname-like
characteristics; that is, the “look and sound” of a
surname. In this respect, it is similar to the more
frequently encountered surname of Hawkins. In short, by
the “look and sound,” HAWTHORNE has the structure and
pronunciation of a surname, not of an arbitrary
designation. Compare In re Sava Research Corp., 32 USPQ2d
1380 (TTAB 1994) [SAVA, for secure communications systems,
has the “look and sound” of an arbitrary acronym, not a
surname].
With respect to applicant’s contention that the Office
has allowed three other HAWTHORNE marks to register, it has
often been stated that the Board must decide each case on
its own set of facts. See In re Nett Designs, Inc., 263
F.3d 1379, 57 USPQ2d 1564 (Fed. Cir. 2001). We are not
privy to the file records of the three third-party
registrations relied upon by applicant and have no way of
knowing the reasons for their allowance. We note, however,
that one of the third-party registrations issued on the
Supplemental Register and another one issued on the
Ser No. 78/039,367
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Principal Register under the provisions of Section 2(f).
This would appear to indicate that, at least with respect
to these registrations, the Office considered HAWTHORNE to
be primarily merely a surname.
Decision: The refusal to register under Section
2(e)(4) is affirmed.