Tom Koroknay

Trademark Trial and Appeal Board

Jun 29, 2001

No. 75456659 (T.T.A.B. Jun. 29, 2001)

06/29/01
Paper No. 12
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Tom Koroknay
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Serial No. 75/456,659
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Kenneth L. Mitchell of Wooding, Krost & Rust for Tom
Koroknay.
Asmat A. Khan, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
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Before Cissel, Holtzman and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 26, 1998, Tom Koroknay (applicant) filed a
trademark application to register the mark LYMAN (typed
drawing) for goods identified as “Boats” in International
Class 12.1
The Examining Attorney refused to register the mark on
the ground that the mark is primarily merely a surname
1 Serial No. 75/456,659. The application alleges a bona fide
intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/456,659
2
under Section 2(e)(4) of the Trademark Act. 15 U.S.C. §
1052(e)(4).
After the Examining Attorney made the refusal final,
applicant filed a notice of appeal. Both applicant and the
Examining Attorney have filed briefs, but applicant did not
request an oral hearing.
We affirm the Examining Attorney’s refusal to
register.
In order to determine whether a term is primarily
merely a surname, we must determine the impact the term has
or would have on the purchasing public. “[I]t is that
impact or impression which should be evaluated in
determining whether or not the primary significance of a
word when applied to a product is a surname significance.
If it is, and it is only that, then it is primarily merely
a surname.” In re Harris-Intertype Corp., 518 F.2d 629,
186 USPQ 238, 239 (CCPA 1975), quoting, Ex parte Rivera
Watch Corp., 106 USPQ 145 (Comm’r Pat. 1955) (emphasis in
original).
The Examining Attorney submitted the following
evidence to establish a prima facie case that LYMAN is
primarily merely a surname. A search of the PHONEDISC
Powerfinder USA One 1998 (4th ed.) returned 5199 residential
listings for the name “Lyman.” The first 100 listings from
Ser No. 75/456,659
3
“A. Lyman” through “Andrea Lyman” were printed and attached
to the Examining Attorney’s first Office Action.
Subsequently, the Examining Attorney also submitted ten
printouts from the LEXIS/NEXIS database showing “Lyman” as
a surname for people referred to in the articles. Finally,
the Examining Attorney also included a page from Merriam-
Webster’s Collegiate Dictionary (Unabridged) to demonstrate
that there was no listing for the term “Lyman.”
Applicant responded to the Examining Attorney’s
refusal by including excerpts from a book entitled The Real
Runabouts, Vol. II. Applicant submits that the book
“illustrates the use of the LYMAN mark in connection with
the 17 and 19 foot ‘RUNABOUT’ boat models as well as many
other models. Further, Exhibit ‘A’ illustrates the
historical significance of Bernard E. Lyman, (1850-1934),
the company founder, citing Lyman’s sale of boats for just
$24.50.” Applicant’s Appeal Brief, pp. 3-4. In addition,
applicant submitted a copy of a registration2 with his
appeal brief. This registration shows that the mark LYMAN
was previously registered for boats on the Principal
Register under Section 2(f).3
2 Registration No. 1,490,080 issued May 31, 1988. The
registration was cancelled in 1994.
3 The Examining Attorney did not object to this evidence
submitted with applicant’s brief and, therefore, we will consider
it.
Ser No. 75/456,659
4
Clearly, the evidence in the file supports the
Examining Attorney’s conclusion that the term LYMAN is
primarily merely a surname. In this case, there are
numerous residential phone listings for “Lyman.”
LEXIS/NEXIS articles show that many individuals have the
last name “Lyman.” Applicant has submitted evidence that
the founder of the previous source of LYMAN boats was named
Bernard E. Lyman. His son, Bill Lyman, was also associated
with the firm. This is evidence of the surname
significance of the term. In re Establissements Darty et
Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985). In
addition, with over 5000 phone directory listings, LYMAN is
not even arguably a rare surname. Id. (DARTY was not so
unusual that the word would not be recognized as a surname
by a substantial number of persons). Also, when the mark
LYMAN was previously registered for boats on the Principal
Register, it was registered under Section 2(f), which is
appropriate for a surname.
Applicant argues that “[i]t is the longtime
association of LYMAN with boats which is important.”
Applicant’s Appeal Brief, p. 4. Even assuming that the
term Lyman is still associated by the purchasing public
with boats, it does not overcome a surname refusal. In a
response to a similar argument that the term McDONALD’S for
Ser No. 75/456,659
5
restaurant services was no longer primarily merely a
surname, the Board held:
In the present situation, the term “McDonald’s” has no
ordinary meaning other than as the possessive of a
relatively common surname in the United States. The
Board readily concedes that the association of
“McDONALD’S” as a source indicating trademark and
service mark has probably overtaken the original
meaning of the word as a surname. However, this is
due to the distinctiveness that has been acquired by
the term over the years.
In re McDonald’s Corp., 230 USPQ 304, 307 (TTAB 1986).
Similarly, any association the public would have with
the term LYMAN as a prior source of boats does not
eliminate the surname significance of the term. The
evidence clearly supports the conclusion that the term
LYMAN is primarily merely a surname. There is little, if
any, evidence to the contrary.
Decision: The Examining Attorney’s refusal to
register the mark LYMAN on the ground that it is primarily
merely a surname is affirmed.