Masco Retail Cabinet Group, LLC

Trademark Trial and Appeal BoardMay 25, 2011

No. 77750639 (T.T.A.B. May. 25, 2011)

Mailed: May 25, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Masco Retail Cabinet Group, LLC ________ Serial No. 77750639 _______ Edgar A. Zarins of Masco Corporation for Masco Retail Cabinet Group, LLC D. Beryl Gardner, Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney). _______ Before Quinn, Kuhlke and Lykos, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: An application has been filed by Masco Retail Cabinet Group, LLC to register the standard character mark WENTWORTH for goods ultimately identified as “kitchen cabinets; bath cabinets” in International Class 20.1 1 Application Serial No. 77750639, filed June 3, 2009, claiming a bona fide intention to use the mark in commerce under Trademark Act Section 1(b) (15 U.S.C. §1051(b)). THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 77750639 2 The 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 WENTWORTH is primarily merely a surname.2 Applicant has appealed. Both applicant and the examining attorney have filed briefs. We affirm the refusal to register. 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 merely a surname are (1) the degree of a surname's rareness; (2) whether anyone connected with applicant has that surname; (3) whether the term has any recognized meaning other than that of a surname; and (4) whether the term has the “look and sound" of a surname. See In re Benthin Management GmbH, 37 USPQ2d 1332, 1333 (TTAB 1995). See also In re Gregory, 70 USPQ2d 1792 (TTAB 2004). Because WENTWORTH is in standard character form, we need not consider the 2 The examining attorney also refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the mark WENTWORTH FURNITURE, INC. in Registration No. 2369597. However, on May 24, 2011, this registration was cancelled under Section 8 of the Trademark Act, 15 U.S.C. § 1058. Therefore, that refusal is now moot. Ser No. 77750639 3 fifth Benthin factor here, that is, whether the manner in which the mark is displayed might negate any surname significance. In support of her contention that WENTWORTH is a surname, the examining attorney provided a sample listing of a search on whitepages.com that retrieved over 100 entries for individuals with the surname WENTWORTH. In addition, she noted that the now cancelled cited registration, Registration No. 2369597 for the mark WENTWORTH FURNITURE, INC., resided on the Supplemental Register with a “disclaimer of FURNITURE, INC., because the Office determined that WENTWORTH FURNITURE, INC. was primarily a surname.” Br. p. 10. In traversing the refusal, applicant argues that “the mark WENTWORTH is not merely a surname since it can operate as a product identifier as evidenced by the cited registration. Moreover, the mark does not have an immediate connotation as a surname in this modern day. Finally, a quick Google search reveals WENTWORTH identifies numerous different locations and products, including hotels, research laboratories, colleges and investment firms. The mark simply does not have the look and feel of a surname and consumers will recognize it as an identifier of the style of the cabinets.” Br. p. 1 (emphasis in original). Ser No. 77750639 4 We first determine whether WENTWORTH is a rare surname. The evidence of over 100 entries is not substantial evidence that the term WENTWORTH is a common surname. Therefore, we conclude, on this record, that the surname WENTWORTH is not a common surname in the United States, and thus it would be somewhat rare. See United Distillers, 56 USPQ2d at 1221 (“Hackler” held to be a rare surname despite 1295 listings in phone directories). However, the fact that a term is not a common surname does not mean that a surname would not be considered to be primarily merely a surname. See In re Adrian Giger and Thomas Giger, 78 USPQ2d 1405, 1408 (TTAB 2006). See also In re E. Martinoni Co., 189 USPQ 589, 590 (TTAB 1975); and In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988). Here, the listings in whitepages.com show use of WENTWORTH as a surname in Twin Falls, Idaho; Chicago, Illinois; Colorado Springs, Colorado; Wichita, Kansas; Boston, Massachusetts; Napa, California; Washington D.C.; Richmond, Kentucky; and Scottsdale, Arizona among other places. In view of this evidence, we find that the surname significance of WENTWORTH would be recognized by prospective purchasers. See Establissements Darty et Fils, supra. The second factor we consider is whether anyone associated with applicant has the surname WENTWORTH. In this case, there is Ser No. 77750639 5 nothing in the record to indicate that anyone associated with applicant has the surname WENTWORTH. As to the third factor, there is no evidence of another recognized meaning of the term WENTWORTH. Although applicant refers to the results of a “Google” search, the results of the search were not made of record. Therefore, the statement is unsupported. Moreover, to the extent that there are examples of WENTWORTH used as a trademark, this is not evidence of another recognized meaning, and the fact that others have acquired distinctiveness in a surname does not obviate a surname refusal. We further note the following entry in Dictionary of American Family Names Vol. III O-Z (Oxford University Press 2003) listing Wentworth as a surname and describing its origin:3 Wentworth English: habitational name from places in Cambridgeshire and South Yorkshire called Wentworth, probably from the Old English byname Wintra meaning ‘winter’ + Old English word ‘enclosure.’ It is, however, also possible that the name referred to a settlement inhabited only in winter. Compare WINTERBOTTOM. FOREBEARS William Wentworth came from Rigsby, England, to Exeter, NH, in 1639. Benning Wentworth (1696-1770) and his nephew John Wentworth (1737 – 1820) were both colonial governors of NH. Finally, we consider whether WENTWORTH has the look and sound of a surname. As stated in Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm'r Pats. 1955): 3 The Board may take judicial notice of entries from reference works. See In re Yeley, 85 USPQ2d 1150, 1153, n.10, n.11 (TTAB 2007) (judicial notice taken of The Little Giant Encyclopedia of Names). Ser No. 77750639 6 There are some names which by their very nature have only a surname significance even though they are rare surnames. "Seidenberg," if rare, would be in this class. And there are others which have no meaning--well known or otherwise--and are in fact surnames which do not, when applied to goods as trademarks, create the impression of being surnames. Applicant argues that WENTWORTH does not have the “look and feel” of a surname. We conclude that WENTWORTH has the look and sound of a surname. First, there are numerous individuals with the surname WENTWORTH throughout the United States. Second, it has no other known significance sufficient to obviate its primary significance as a surname. “It would not be perceived as an initialism or acronym, and does not have the appearance of having been coined by combining a root element that has a readily understood meaning in its own right with either a prefix or a suffix.” Gregory, 70 USPQ2d at 1796. The facts of this case are distinguished from In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994) where the Board found the word SAVA “to have the look and sound of an acronym, and that applicant’s explanation as to the meaning of SAVA [was] quite plausible.” In this case, applicant has not argued nor is it plausible that WENTWORTH would be perceived as an acronym or abbreviation. As noted above, some names by their very nature have only surname significance and WENTWORTH is such a name. See Industrie Pirelli Societa per Azioni, 9 USPQ2d at 1566. (certain rare surnames look like surnames). Ser No. 77750639 7 As to applicant’s reference to the prior cited registration, as noted by the examining attorney, in view of its placement on the Supplemental Register, it supports the opposite proposition, namely that WENTWORTH is a surname. In conclusion, while WENTWORTH is not a common surname and no one associated with applicant has the surname WENTWORTH, it has the look and sound of a surname and the record points to no other definitive recognized meaning for this term. Thus, when we view the term WENTWORTH under the factors set out in Benthin, we find that the examining attorney has met her initial burden of showing that the term WENTWORTH would primarily be viewed as a surname and applicant has not rebutted this prima facie case. Therefore, we conclude that prospective purchasers would understand that WENTWORTH is primarily merely a surname. Decision: The refusal to register under Section 2(e)(4) of the Trademark Act on the ground that it is primarily merely a surname is affirmed.