Peter L. Reynolds

Trademark Trial and Appeal Board

May 11, 2001

No. 75540216 (T.T.A.B. May. 11, 2001)

5/11/01
UNITED STAT
Tradem
In
S
Andrew R. Basile and D
P.C. for Peter L. Reyn
Elizabeth A. Hughitt,
111 (Craig D. Taylor,
Before Hairston, Buche
Judges.
Opinion by Bucher, Adm
An intent-to-use
Reynolds to register t
caffeinated and non-ca
30, and “beverages, na
sparkling water, sprin
fruit flavored drinks
32.1
1 Application Serial
upon a bona fide intenti
1(b), 15 U.S.C. §1051(b)THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Paper No. 12
DEB
ES PATENT AND TRADEMARK OFFICE
________
ark Trial and Appeal Board
________
re Peter L. Reynolds
________
erial No. 75/540,216
_______
enise M. Glassmeyer of Young & Basile,
olds.
Trademark Examining Attorney, Law Office
Managing Attorney).
_______
r and Holtzman, Administrative Trademark
inistrative Trademark Judge:
application has been filed by Peter L.
he mark OAKLEY for “beverages, namely,
ffeinated tea” in International Class
mely, flavored and non-flavored
g water, caffeinated and non-caffeinated
and smoothies,” in International Class
No. 75/540,216, filed August 21, 1998, based
on to use the mark in commerce under Section
.
Serial No. 75/540,216
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 her surname refusal, the Trademark
Examining Attorney has made of record the results of her
search of a database containing more than one-hundred million
names, finding 7,402 OAKLEY surname listings from PHONEDISC
POWERFINDER USA ONE 1998 (4th ed.).
Applicant argues that the Trademark Examining Attorney
has failed to establish a prima facie surname case. Applicant
challenges the Trademark Examining Attorney’s conclusions on
the ground that no one associated with applicant possesses the
surname OAKLEY, and that because the term “is the name of
several cities in the United States” (brief, p. 1), it has
other non-surname significance, and has been publicized in
recent years as a trademark for trendy sunglasses, for
instance.
The test for determining whether a mark is primarily
merely a surname is the primary significance of the mark to
Serial No. 75/540,216
3
the purchasing public. See In re Hutchinson Technology Inc.,
852 F.2d 552, 554, 7 UPQ2d 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 initial burden is on the
Trademark Examining Attorney to establish a prima facie case
that a mark is primarily merely a surname. See In re
Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ 652,
653 (Fed. Cir. 1985). After the Trademark Examining Attorney
establishes a prima facie case, the burden shifts to the
applicant to rebut this finding.
The Board, in the past, has considered several different
factors in making a surname determination under Section
2(e)(4): (i) the degree of surname rareness; (ii) whether
anyone connected with applicant has the surname; (iii) whether
the term has any recognized meaning other than that of a
surname; and (iv) the structure and pronunciation or “look and
sound” of the surname. In re Benthin Management GmbH, 37
USPQ2d 1332 (TTAB 1995).
There is no doubt that the Trademark Examining Attorney
has met her initial burden of establishing that OAKLEY would
be perceived by consumers as primarily merely a surname. In
particular, the Trademark Examining Attorney has referenced
over seven thousand OAKLEY surname entries from the PHONEDISC
Serial No. 75/540,216
4
database. 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; see also 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION, §13.30, p. 13-50 (4th ed. 1999).
The Trademark Examining Attorney’s PHONEDISC evidence is
collected from telephone directories and address books across
the country. 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). It
is reasonable to conclude from these submissions that OAKLEY
has had measurable public exposure.2 Even applicant concedes
from the PHONEDISC evidence that “Oakley appears to be a
surname in telephone directories.” Furthermore, from this
demonstrated level of surname frequency, OAKLEY is by no means
a decidedly rare surname.3 From more than seven thousand
2 To the extent applicant contends that OAKLEY is an uncommon
surname, we would point out that even uncommon surnames may not be
registrable on the Principal Register. See Industrie Pirelli, 9
USPQ2d at 1566.
3 This evidence is far more significant than the number of
listings presented in other cases where the surname has been
categorized as “rare.” See e.g. Kahan & Weisz, 508 F.2d at 832, 184
USPQ at 422 (six DUCHARME surname telephone directory listings); In
re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994)(one hundred SAVA
Serial No. 75/540,216
5
OAKLEY surname references in the PHONEDISC database, we
conclude that OAKLEY is a surname in the United States.
As to the second Benthin factor, we recognize that no one
connected to applicant has been shown to have the “Oakley”
surname. If an Oakley were associated in some way with
applicant, it could well indicate the public’s recognition of
the term as a surname. However, logic tells us that the
converse is not necessarily true, i.e., the mere fact that
this query comes up negative herein cannot compel the
conclusion that consumers will perceive the term as a non-
surname.
In weighing the third Benthin factor, we have considered
applicant’s contention that “Oakley” has recognized meanings
other than that of a surname. While applicant argued that the
term “is the name of several cities in the United States,” no
such evidence was ever proffered. Rather, the Trademark
Examining Attorney placed into the record a geographical
dictionary entry showing Oakley, Kansas to be a small town
having a population of two-thousand people. However, both the
surname telephone directory listings); Benthin Management, 37 USPQ2d
at 1333 (one hundred BENTHIN surname telephone directory listings);
In re Garan, Inc., 3 USPQ2d 1537 (TTAB 1987)(six GARAN telephone
directory listings and one NEXIS listing). This is one of four
factors. Hence, the quantum of PHONEDISC evidence which may be
persuasive for finding surname significance in one case may be
insufficient in another because of differences in the surnames
themselves and/or consideration of the other relevant surname
factors. Darty, supra.
Serial No. 75/540,216
6
Benthin decision and our primary reviewing court clearly
require that the other meanings be “recognized” by a
significant number of people. See Harris-Intertype, supra;
Benthin Management, supra. The mere fact that the word Oakley
has a relatively obscure or remote meanings is insufficient to
show that it will not be perceived as “primarily merely a
surname.” See Harris-Intertype, supra; In re Hamilton
Pharmaceuticals Ltd., 27 USPQ2d 1939, 1942 (TTAB 1993).
Applicant certainly has not demonstrated that a significant
number of consumers throughout the United States would
recognize that “Oakley” is the name of a small town in Logan
County, Kansas. Thus, applicant has not been able to rebut
the Examining Attorney’s prima facie surname case.
Finally, as to the fourth Benthin factor, it is the view
of the Board that OAKLEY has the structure and pronunciation
of a surname, not of an arbitrary designation. See Garan, 3
USPQ2d at 1538; Industrie Pirelli, 9 USPQ2d at 1566; and In re
Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994). In
fact, judging this matter simply by its “look and sound,”
OAKLEY seems to fit the archetype of British surnames having
an “-ley” suffix, such as OWSLEY and OXLEY.
Decision: The refusal to register the mark OAKLEY under
Section 2(e)(4) is affirmed.