The Board rejected Rath's argument that the "primarily merely a surname" rule conflicts with the United States' obligations under the Paris Convention, and therefore cannot be relied upon by the PTO to refuse a foreign applicant registration of a mark already registered in his country of origin. The Board also held that section 44 of the Lanham Act (which implements the Paris Convention) does not require registration of a mark that is primarily merely a surname, relying on our decision in In re Etablissements Darty et Fils, 759 F.2d 15 (Fed. Cir. 1985). Rath appeals.

Furthermore, the majority places too high a burden on the PTO with regard to making out a prima facie case against registration. See In re Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ 652, 653 (Fed. Cir. 1985) (stating that PTO has initial burden of establishing prima facie case). It is beyond cavil that the PTO must provide sufficient evidence to support a finding that, when viewed as a whole, the primary significance of the mark to the purchasing public is that of a surname. See e.g.

... To prove distinctiveness under 15 U.S.C. § 1052(f), applicants may submit any appropriate evidence tending to show that the mark distinguishes [applicant’s] goods.") (internal quotation marks omitted).The Opposers argue that SCHLAFLY is significant to the public primarily as the surname of Phyllis Schlafly. Citing In re Etablissements Darty et Fils , 759 F.2d 15, 17 (Fed. Cir. 1985), the Opposers urge the court to adopt a new test that they call a "change in significance" test, whereby a surname cannot be registered as a trademark without showing a change in significance to the public, from a surname to an identifying mark for specified goods. Appellants’ Br. 12–13.

One ground for denying registration of a mark is if the mark is "primarily merely a surname," under the notion that a surname is "shared by more than one individual, each of whom may have an interest in using his surname in business." In re Etablissements Darty et Fils , 759 F.2d 15, 17 (Fed. Cir. 1985) ; 15 U.S.C. § 1052(e)(4). A mark is primarily merely a surname if the surname "is the primary significance of the mark as a whole to the purchasing public."

In this case, however, the word at issue is a surname. Generally surnames are treated like descriptive marks in that secondary meaning must be shown for trademark protection under the Lanham Act. 15 U.S.C. § 1052(e)(3), (f); In re Etablissements Darty et Fils, 759 F.2d 15, 16 (Fed. Cir. 1985). A mark has acquired secondary meaning "[i]f because of association with a particular product or firm over a period of time [it] has come to stand in the minds of the public as a name or identification for that product or firm. . . ."

The Lanham Act excludes from registration words, like Davis or perhaps Dant, that are "primarily merely a surname." 15 U.S.C. § 1052(e)(4) ; seeIn re Etablissements Darty Et Fils , 759 F.2d 15, 17 (Fed. Cir. 1985).

This limit on allowing a party to receive trademark protection for a surname "reflects the common law that exclusive rights in a surname per se cannot be established without evidence of long and exclusive use which changes its significance to the public from a surname of an individual to a mark for particular goods or services." In re Etablissements Darty Et Fils , 759 F.2d 15, 17 (Fed. Cir. 1985). Similarly, Kentucky law instructs that "a family surname is incapable of exclusive appropriation in trade."

While that is certainly true to some extent, this argument does not get defendant very far, for many of those marks contain unmistakable signs (which are absent here) evoking an individual's name: such as including arguable first names, employing more than one apparent name, adding initials, or containing additional words bolstering the surname significance of certain terms. See, e.g., In re Etablissements Darty et Fils, 759 F.2d 15 (Fed. Cir. 1985) ("Darty et Fils," meaning "Darty and Son" in French, held to be nonregistrable without proof of distinctiveness).