Marriott International, Inc.

Trademark Trial and Appeal Board

Nov 23, 2007

No. 78489804 (T.T.A.B. Nov. 23, 2007)

Hearing: Mailed: November 23, 2007
March 20, 2007 PTH

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Marriott International, Inc.
________

Serial Nos. 78489804 and 78489829
_______

Michael A. Grow, Douglas R. Bush and Jason J. Mazur of Arent
Fox PLLC for Marriott International, Inc.

Brian D. Brown, Senior Trademark Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Hairston and Mermelstein, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Applications have been filed by Marriott International,
Inc. to register the mark MARRIOTT (in standard character
form) for “charitable services, namely, employment
counseling and assistance in obtaining and maintaining
employment provided to individuals and employers; counseling
in the field of employment; coordinating volunteers for
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser Nos. 78489804 and 78489829
2
community service” in International Class 351; and
“charitable fund raising services; providing financial
support to charitable, family services and health-related
organizations; provision of in-kind contributions to public
and private entities and individuals; providing educational
scholarships and grants to educational institutions” in
International Class 36.2
Registration has been finally refused in each case
under Section 2(e)(4) of the Trademark Act, 15 U.S.C.
§1052(e)(4), on the ground that the mark which applicant
seeks to register is primarily merely a surname.
Applicant, in each case, has appealed. Briefs have
been filed and applicant’s counsel and the senior trademark
attorney also appeared at an oral hearing.3 Because the
issue in each case is the same, the appeals have been
treated in a single opinion.4

1 Serial No. 78489804, filed on September 27, 2004, which alleges
dates of first use of 1990.
2 Serial No. 78489829, filed on September 27, 2004, which alleges
dates of first use of 1983.
3 At the oral hearing, senior trademark attorney Brian D. Brown
represented the USPTO in both cases. We note that Mr. Brown
handled Serial No. 78489804. Serial No. 78489829 was handled by
two different examining attorneys; Raul Cordova issued the first
and second office actions and the response to applicant’s request
for reconsideration, which included all evidence introduced by
the USPTO during examination; Peter Cheng prepared the brief.
For purposes of this decision, we will refer to them collectively
as the “examining attorney.”
4 As discussed infra, however, the evidence submitted by the
examining attorney in each case is somewhat different.
Ser Nos. 78489804 and 78489829
3
A term is primarily merely a surname if, when viewed in
relation to the goods or services for which registration is
sought, its primary significance to the purchasing public is
that of a surname. See In re United Distillers plc, 56
USPQ2d 1220 (TTAB 2000). The burden is on the examining
attorney to establish a prima facie case that a term is
primarily merely a surname. In re Etablissements Darty et
Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985). Among the
factors to be considered in determining whether a term is
primarily a surname are (1) the degree of the surname’s
rareness; (2) whether anyone connected with applicant has
the surname; (3) whether the term has any recognized meaning
other than that of a surname; (4) whether the term has the
“look and sound” of a surname; and (5) whether the term is
depicted in a stylized form distinctive enough to create a
non-surname impression. See In re Benthin Management GmbH,
37 USPQ2d 1332, 1333 (TTAB 1995). See also In re Gregory,
70 USPQ2d 1792 (TTAB 2004).
The examining attorney, in Serial No. 78489804,
conducted searches of the “www411.com” white pages database
of telephone listings for “Marriott” and a given name or
initial located in the states of Florida, New York and Texas
(e.g., “Marriott, robert, NY”). The searches returned
thirty-five residential listings of individuals with the
surname MARRIOTT (a printout of thirty retrieved listings
Ser Nos. 78489804 and 78489829
4
was included). Also, the examining attorney submitted the
results of a search of the website http://lookwayup.com
where “marriott” is defined as “[n] Last name, frequency
rank in the U.S. is 7195,” and the results of a search of
the website http://www.rhymezone.com where “marriott” is
defined as “name: A surname (rare: 1 in 50000 families;
popularity rank in the U.S.: #7195).” Also, the examining
attorney made of record printouts from “Wikipedia” and the
web site http://sls.sites which indicate, inter alia, that
applicant’s founder was J. Willard Marriott. Further, the
examining attorney submitted the results of searches of the
online version of the Merriam-Webster dictionary for
“marriott”, “marriot”, “mariot”, and “mariott” which reveal
no entries for any of these terms. Finally, the examining
attorney submitted copies of five registrations owned by
applicant for marks which consist of or include the term
MARRIOTT (in typed form) and which issued on the Principal
Register under Section 2(f) of the Trademark Act.
The examining attorney, in Serial No. 78489829,
submitted the results of a search conducted on May 4, 2005
of the Lexis/Nexis (“USFIND”) database which revealed that
there are 2171 residential telephone listings in the United
States for persons with the surname “Marriott” (a printout
of the first 100 of the retrieved listings was included);
and the results of a search conducted on July 7, 2006 of the
Ser Nos. 78489804 and 78489829
5
Lexis/Nexis (“P-FIND”) database which revealed that there
are 2386 residential listings in the United States for
persons with the surname “Marriott” (a printout of the first
125 of the retrieved listings was included). Also, the
examining attorney made of record copies of the same five
registrations owned by applicant which issued on the
Principal Register under Section 2(f) of the Trademark Act.
Finally, the examining attorney submitted the results of a
search of the online version of The American Heritage
Dictionary (4th ed.) for “marriott” which states that “No
documents match the query.”
Applicant, in support of its position, submitted the
same evidence in each case. Specifically, applicant
submitted copies of thirteen registrations which it owns for
marks that consist of or contain MARRIOTT and which issued
on the Principal Register without a Section 2(f) claim; and
a printout from the U.S. Census Bureau web site showing a
national population count estimated at 297,563,554 on
September 30, 2005.
We first turn to the fifth factor, i.e., whether the
term sought to be registered is depicted in a stylized form
distinctive enough to create a separate non-surname
impression. Applicant maintains that it frequently uses
MARRIOTT in a stylized form and with a design element which
is distinctive enough to create a non-surname impression.
Ser Nos. 78489804 and 78489829
6
The problem with this argument, however, is that applicant
seeks to register MARRIOTT (in both applications) in
standard character format; there is no stylization or design
involved. Because we are constrained in this proceeding to
consider the registrability of the marks as they are shown
in the applications, applicant’s arguments about any actual
use of the mark cannot be considered. We turn therefore to
a consideration of the first four factors.
As to the first factor, i.e., the degree of rareness of
MARRIOTT, applicant argues that, at best, the record shows
that MARRIOTT is an extremely rare surname. Applicant
argues that the examining attorney’s Lexis/Nexis search
results, in particular, are flawed because only the first
100 and 125 results of the respective searches were made of
record. Applicant maintains that it has no way of knowing
if the remaining results contained duplicative or otherwise
questionable results. In any event, applicant contends that
based on the listings of record, only about two one-
thousandths of one percent of the United States population
may have the MARRIOTT surname, and that such evidence
“certainly does not meet the ‘unusually large number’
generally required as set out in the case of In re Harris-
Intertype.” (Applicant’s brief at 6).
We acknowledge that the actual printouts submitted by
the examining attorney from the searches of the Lexis/Nexis
Ser Nos. 78489804 and 78489829
7
and the “www411.com” white pages computerized databases show
a small number of residential listings for persons with the
“Marriott” surname, i.e., 100, 125 and 30 respectively.
However, we disagree with applicant’s criticism that these
submissions are insufficient to support the larger numbers
retrieved by the Lexis/Nexis searches. The Board has
frequently taken the position that, in connection with Nexis
searches in general, it is necessary only to submit a
representative sample. We consider the examining attorney’s
submission of a number of the actual listings, combined with
the search results showing the numbers of additional
listings that were retrieved, to be sufficient. Although
the actual listings that were submitted show several
listings that appear to be duplicative, even allowing for
duplicative or questionable results among the non-submitted
Lexis/Nexis listings, it is reasonable to conclude that the
results demonstrate approximately 2000 residential listings
for persons with the “Marriott” surname. Moreover, a review
of the submitted evidence from the “www411.com” white pages
and Lexis/Nexis computerized databases reveals that the
listings are spread throughout the United States and include
households in at least twenty different states.
In this case, we find that while MARRIOTT is not a
common surname, we cannot conclude that the surname is so
rare that this factor, the degree of the surname’s rareness,
Ser Nos. 78489804 and 78489829
8
should weigh in applicant’s favor, or weigh only slightly in
support of the USPTO’s position. The evidence shows that, in
terms of telephone directory listings alone, in excess of
2000 people in the United States have the surname
“Marriott.” This evidence, of course, does not take into
consideration additional people living in a particular
household, or those people whose telephone numbers are not
listed in telephone directories, either because they prefer
not to have their numbers publicly listed, or because they
use only a cellular telephones. As a result, we find that
the evidence is sufficient for us to conclude that MARRIOTT
is not a rare surname, as that concept has been interpreted
in the case law. In this regard, we note that the
“rhymezone” evidence submitted by the examining attorney
characterizes the “Marriott” surname as “rare.” This
characterization appears to be based solely on the frequency
of use of “Marriott” as a surname in the general U.S.
population. However, the fact that the authors of a web
site consider a name rare in terms of its frequency of use
as a surname does not necessarily mean that such surname
will be considered rare under the Board’s case law. See In
re Gregory, supra, at 1795. [The existence of two elected
officials with the surname ROGAN led the Board to conclude
that “the name may be rare when viewed in terms of frequency
of use as a surname in the general population, but not at
Ser Nos. 78489804 and 78489829
9
all rare when viewed as a name repeated in the media and in
terms of public perception.”]. A mark may be found to be
primarily merely a surname even though it is not a common
surname. See In re Giger, 78 USPQ2d 1405 (TTAB 2006). See
also In re E. Martoni Co., 78 USPQ2d 589 (TTAB 1975); and In
re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB
1988). Moreover, there is no minimum number of listings
needed to prove that a mark is primarily merely a surname.
With respect to applicant’s argument regarding the small
percentage of people living in the United States with the
surname “Marriott”, “given the large number of different
surnames in the United States, even the most common surnames
would represent but small fractions of the total
population.” In re Gregory, supra, at 1795.5
As to the second factor, i.e., whether anyone
associated with applicant has the surname MARRIOTT, we note
that the “Wikipedia” printout states that applicant was

5 Insofar as the concurring opinion is concerned, the situation
discussed therein is not before us. As we have indicated, the
number of “Marriott” listings in the computer databases is
sufficient for us to find that “Marriott” is not an especially
rare surname. Even if, however, we had found that “Marriott” was
very rare based on a record with only a few listings in the
computer databases, that would not have foreclosed the inquiry,
i.e., we would not have automatically found that the term was
registrable based only on its frequency. Rather, we still would
have looked at the evidence on the remaining surname factors. In
short, we would have balanced the fact that the surname was very
rare with the other surname factors to determine whether the
Office had made out a prima facie case. While it may be unusual
to deny registration of a very rare surname, decisions of
registrability should be made in light of all probative evidence.
Ser Nos. 78489804 and 78489829
10
founded by J. Willard Marriott, and that his son, J.W.
“Bill” Marriott, Jr., is the current Chairman and CEO of
applicant. This reinforces the surname significance of
MARRIOTT. Further, the “Wikipedia” printout states that
“Bill is actively involved in various boards and
councils… ,” and “[h]e serves as chairman of the President’s
Export Council, a group that advises the President on
matters relating to export trade, and serves as chairman of
the Leadership Council of the Laura Bush Foundation for
America’s Libraries.” The printout from the web site
http://sls.sites discusses the history of applicant and the
activities of the Marriott family, indicating that “[t]he
Marriotts have been extremely active in the Salt Lake
Valley” and that the “Marriott family donated funds needed
for the Marriott library at the University of Utah and have
helped with a variety of other notable efforts in the Salt
Lake Valley.” As a result of Bill Marriott’s civic
involvement on the national level and the Marriott family’s
philanthropic activities in the Salt Lake City area, a
significant number of individuals in the United States would
be exposed to the “Marriott” name. This is also likely to
cause consumers to view MARRIOTT as a surname.
The third factor we consider is whether there is
evidence of another recognized meaning of the term MARRIOTT.
The examining attorney submitted dictionary evidence which
Ser Nos. 78489804 and 78489829
11
shows that there are no listings or entries for “marriott”
(or variations thereof) in The American Heritage Dictionary
and Merriam-Webster Dictionary. For its part, applicant
makes the following argument with respect to this factor:
A search for MARRIOTT in any number of databases
shows that MARRIOTT has significance other than as
a surname. For example, a search in the Nexis
news database demonstrates that the vast majority
of uses of MARRIOTT are in conjunction with
commerce, not as a surname. Similarly, a review
of the first 500 results of a Google Internet
search for MARRIOTT demonstrates that the vast
majority of the results have nothing to do with
surnames but rather demonstrate that MARRIOTT has
a commercial or other non-surname significance.
Indeed, the searches show that MARRIOTT is used to
identify:

- a theatre
- a library
- a dance center
- a business school
- an arena
- geographical locations, such as Marriott
Hill; Marriottsville; and the town of
Marriott, sometimes known as Marriott-
Slaterville
- various corporations
- hospitality and related services

(Brief at 9).
The first problem with this argument is that applicant
failed to make of record the results of its Nexis and Google
searches. Second, even assuming that applicant had
presented evidence showing that the term “marriott”
identified a handful of towns and other commercial and non-
commercial enterprises, these minor occurrences do not
demonstrate that the term is not primarily a surname. See
Ser Nos. 78489804 and 78489829
12
In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238,
239 (CCPA 1975) [Cities, towns and other things may be named
after an individual]. Third, as discussed infra, because
applicant seeks registration on the Principal Register
without resort to Section 2(f), applicant cannot be heard to
argue that MARRIOTT identifies its “various corporations”
and “hospitality and related services.” See in re Cazes, 21
USPQ2d 1796 (TTAB 1991) [Applicant argued that LIPP or
BRASSERIE LIPP is no longer primarily merely a surname
because the significance of the term is now that of a mark
for her restaurant; argument rejected because applicant did
not seek registration under Section 2(f)]. In short, there
is no evidence that the term “marriott” has any other
recognized meaning. Thus, it is the surname significance of
“Marriott” which dominates.
The fourth factor we consider is whether MARRIOTT has
the look and sound of a surname. Applicant contends that
MARRIOTT “looks more like a foreign word than a surname,
although it has no foreign language meaning.” (Brief at
14). Applicant has not submitted any evidence of a foreign
word that resembles MARRIOTT, such that we could conclude
that consumers seeing MARRIOTT would regard it as being a
foreign term or as something other than a surname.
Admittedly, this is a somewhat subjective factor, but we
agree with the examining attorney that the term has the look
Ser Nos. 78489804 and 78489829
13
and sound of a surname, especially since the record shows
that there are numerous individuals with the surname
“Marriott,” that such term has no meaning or connotation
other than its surname significance; and that nothing in the
record indicates that MARRIOTT would be perceived as an
intialism or acronym, or a coined term. Rather, the term
MARRIOTT “appears to be a cohesive term with no meaning
other than as a surname.” In re Gregory, supra at 1796.
Several additional arguments made by applicant require
comment. Applicant argues that its mark “is not linked with
any surname indicators,” such as “and Sons” or “and Co.”
(Brief at 12), and thus the purchasing public would not view
its mark as primarily merely a surname. While the addition
of certain terms to a surname has been found to reinforce
rather than detract from the surname significance of a mark
(See e.g., In re Rath, 402 F.3d 1207, 47 USPQ2d 174 (Fed.
Cir. 2005) [Federal Circuit affirmed board decision holding
that DR. RATH was primarily merely a surname]; In re Giger,
supra [GIGER MD held primarily merely a surname]; and In re
I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (CCPA
1953) [S. SEIDENBERG & CO.’S held primarily merely a
surname], the fact that applicant has not added such a term
to MARRIOTT does not mean that the mark would be not be
perceived primarily as a surname.
Ser Nos. 78489804 and 78489829
14
Applicant also argues that the USPTO has issued
fourteen registrations to applicant for marks that consist
of or contain MARRIOTT on the Principal Register without a
Section 2(f) claim and that such registrations show that the
USPTO has treated MARRIOTT as not primarily merely a
surname. We note that three of the registrations relied
upon by applicant are for MARRIOTT marks depicted in a
stylized form distinctive enough to create a separate non-
surname impression. Moreover, as previously noted, the
examining attorney submitted five registrations for marks
that consist of or contain MARRIOTT which issued on the
Principal Register with a Section 2(f) claim. Thus, we are
unable to draw the conclusion urged by applicant based on
its prior registrations. In any event, the Board’s task in
this ex parte appeal is to determine, based on the record
before us, whether applicant’s mark is primarily merely a
surname. Each case must be decided on its own merits.
Moreover, the determination of registrability of those
particular marks by the examining attorneys cannot control
our decision in the cases now before us. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 156 (Fed. Cir.
2001) [“Even if some prior registrations had some
characteristics similar to (applicant’s application), the
PTO’s allowance of such prior registrations does not bind
the Board or this court.”]
Ser Nos. 78489804 and 78489829
15
Further, applicant asserts that the USPTO has issued
registrations for the mark HILTON on the Principal Register
without a Section 2(f) claim even though “Hilton” is a more
common surname than “Marriott.” There is no evidence of
record with respect to any registrations allegedly issued
for HILTON marks and the Board does not take judicial notice
of third-party registrations. See e.g., In re Duofold Inc.,
184 USPQ 638 (TTAB 1974). Even if such evidence had been
made of record, as noted above, each case must be decided on
its own set of facts.
Applicant also asserts that it “operates one of the
world’s most well-known and extensive hotel, restaurant, and
hospitality companies…;” that it has “continuously offered
services under the mark MARRIOTT since as early as 1960, and
each year, millions of Applicant’s customers obtain services
under the mark MARRIOTT;” and that “as a result of
Applicant’s longstanding and extensive advertising and
promotional activities, the mark MARRIOTT has become one of
the most readily recognized and famous trademarks in the
world.” (Brief at 2). This argument, however, goes to
whether applicant’s mark has acquired distinctiveness, not
to whether the term MARRIOTT, viewed in and of itself, is
primarily merely a surname. See In re McDonald’s Corp., 230
USPQ 304, 307 (TTAB 1986) [“In short, we have here a
situation where a noninherently distinctive term, having no
Ser Nos. 78489804 and 78489829
16
ordinary meaning other than that of a surname is sought to
be registered. While applicant has demonstrated a strong
public association between the mark sought to be registered
and applicant’s restaurant services, the Board concludes
that this evidence is evidence of secondary meaning and that
in the absence of a claim of secondary meaning pursuant to
Section 2(f), registration must be refused under Section
2(e)(3).”]
Finally, applicant argues that any doubt as to whether
MARRIOTT is primarily merely a surname should be resolved it
its favor. Applicant is correct that our case law holds
that if we have doubt about whether the term is a surname,
we resolve that doubt in favor of the applicant for
publication of the mark. In this case, we have no such
doubt.
In sum, when we consider the evidence as a whole, we
find that the USPTO has made out a prima facie case that
MARRIOTT is primarily merely a surname and that applicant
has not rebutted this prima facie case.
Decision: The refusal to register is affirmed in each
case.
Seeherman, Administrative Trademark Judge, concurring:
I write this concurring opinion to elaborate on
comments I made in my concurring opinion in In re Joint-
Stock Company “Baik”, __USPQ2d__ (Serial No. 78521961, TTAB
Ser Nos. 78489804 and 78489829
17
August 28, 2007). Although we look at several factors in
determining whether a mark is primarily merely a surname, it
is the first factor, the rarity of the surname, which is
critical in determining whether the Office has made out a
prima facie case. The purpose of Section 2(e)(4) of the
Trademark Act is to keep surnames available for use by those
with that surname. See Kimberly-Clark Corp. v. Marball,
Comr. Pats., 94 F. Supp 254, 88 USPQ 277, 279 (D.D.C. 1950)
(“The spirit and the intent of the entire Act indicate that
Congress intended to codify the law of unfair competition in
regard to the use of personal names as it has been developed
by the courts. ... At common law it was held that every man
had an absolute right to use his own name.”). During the
hearings on the bills that eventually became the Lanham Act,
the testimony shows that Congress was not trying to prevent
the registration of surnames per se; one witness pointed out
that “almost every word you can think of is somebody’s
surname, somewhere” and to refuse the registration of a term
because “it falls into the general category that there might
be a surname somewhere of that kind, that somebody somewhere
may bear that name, it merely limits the field of choice.”
Hearings on H.R. 4744 Before the Subcomm. Trade-Marks of the
House Comm. on Patents, 76th Cong., 1st Sess. (1939) at 40.6

6 Congress also intended, as discussed infra, that surnames
which have other meanings should be registrable.

Ser Nos. 78489804 and 78489829
18
If a surname is extremely rare, there are very few, if
any, people who can possibly be affected by the registration
of that surname. This is because not only must there be a
person with that surname, but that person must want to use
his or her surname for the same or related goods or services
as those of the trademark applicant. Accordingly, if the
Examining Attorney cannot show that a reasonable number of
people have a particular surname, in my view the Office
cannot meet its burden of prima facie showing that a mark is
primarily merely a surname.7
It is only after the Office has met the burden of
showing that a mark is not an extremely rare surname that
the other factors should come into play. In effect, I
suggest that even if all of the other factors that we use to
determine surname significance were to favor the Examining
Attorney’s position, if the surname is so rare that
essentially no one will be affected by its registration, the
mark should be registrable. The remaining factors are used
in determining whether, even though the Office has shown

7 Many surname cases were decided prior to the availability of
computer databases showing surname listings for everyone in the
United States, and therefore there was some uncertainty, based on
evidence from a limited number of print telephone directories,
about how rare a surname might be. As a result, the Board and
the Courts often looked to factors other than the rareness of the
surname to support a finding that a term was not primarily merely
a surname. I suggest that, with the availability of these
computer databases, we can determine whether a term is truly a
rare surname, and if a term is sufficiently rare, we should find
it registrable regardless of the evidence on the other factors.

Ser Nos. 78489804 and 78489829
19
that the mark is a surname, it is primarily merely a
surname, or whether it would have another, non-surname
significance to consumers.
In determining whether a term has a non-surname
significance, we must still take into consideration the
degree of rareness of the surname; if the term is a common
surname, stronger evidence, e.g., that the surname would
also be recognized as a word, would be required to show that
it is not primarily merely a surname, but if the name is
uncommon, but not extremely rare, evidence on the remaining
factors may be sufficient to show that the term would or
would not be perceived as a surname, and therefore would or
would not, under the statute, be primarily merely a surname.
Thus, we look at whether anyone connected with the
applicant has that surname, since that would reinforce the
surname significance of the mark to consumers. We also look
at whether people with that surname are frequently in the
news, or are public figures, since that again would cause
consumers to regard the term as a surname. In re Gregory,
supra.
However, if a mark is shown in a distinctive display
that gives it a non-surname significance, it will not be
primarily merely a surname. In re Benthin Management GmbH,
37 USPQ2d 1332 (TTAB 1995). Similarly, if a term has a
recognized non-surname meaning, it cannot be primarily
Ser Nos. 78489804 and 78489829
20
merely a surname. In this connection, the legislative
history makes clear that the Lanham Act was designed to
change the then-practice of the Patent Office of refusing
registration of common words, such as COTTON and KING,
simply because those words were also found as surnames in
directories. See Hearings on H.R. 4744, supra. Or if a
term does not have the look and feel of a surname, even
though it does not have another recognized meaning, it
should not be found to be primarily merely a surname. See
In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.3d 831, 184
USPQ 421 (CCPA 1975), in which DUCHARME for watches was
found not primarily merely a surname. The Court, commenting
on the Kahan & Weisz decision in In re Etablissements Darty
et Fils, supra, 225 USPQ at 653, stated that “we can see
that it [DUCHARME] was likely to be taken as a fanciful mark
for watches derived from the apt word ‘charm’.” See also
In re The Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989), in
which CALISTO was found to be not primarily merely a surname
because of the combination of the limited evidence of
surname significance and the fact that CALLISTO had other
meanings, such that CALISTO might be perceived as a
misspelling of CALLISTO rather than as a surname. Compare,
In re Pickett Hotel Company, 229 USPQ 760 (TTAB 1986) in
which the Board found that PICKETT, which was shown to be
Ser Nos. 78489804 and 78489829
21
the surname of a large number of people, would not be
perceived as merely a misspelling of the word “picket.”
Further, with respect to the factor of “look and feel,”
as I said in my concurring opinion in In re Joint-Stock
Company “Baik”, supra, I believe that registration should
not be refused simply because the mark at issue is similar
in sound and appearance to other surnames. Rather, the
evidence that should be considered in connection with this
factor is evidence that shows a term does not have the look
and feel of a surname and therefore would not be perceived
as a surname. Accordingly, evidence on this factor would be
part of the applicant’s evidence rebutting the prima facie
case made by the Office showing that a significant number of
people have a surname, to demonstrate that the term is not
primarily merely a surname because it will not be perceived
primarily merely as a surname.
Applying this analysis to the case at hand, I agree
with the majority that, although there are a limited number
of individuals with the surname MARRIOTT, it is not such a
rare surname that others with the surname will not be
damaged by the registration of MARRIOTT by applicant. In
other words, the name should remain available so that others
who have that surname may use it in connection with the
identified services. The fact that a person with the
surname Marriott--J. Willard Marriott-- is applicant’s
Ser Nos. 78489804 and 78489829
22
founder, and that his son Bill Marriott and the Marriott
family is active in charitable activities, reinforces the
conclusion that consumers will perceive the mark as a
surname. Further, as the majority has pointed out, there is
no design element that would take away from the surname
significance of the term. Finally, I also agree with the
majority that there is no evidence that the mark has
another, non-surname, meaning, or that consumers would view
this mark as anything other than a surname. Thus, although
MARRIOTT is certainly not a common surname, there is no
evidence that would suggest a non-surname significance or in
any way would support the position that, because of the
rarity of the name, consumers would not perceive it as a
surname. Accordingly, I agree that the refusal of
registration should be affirmed because MARRIOTT is
primarily merely a surname.