Max Rohr, Inc.

Trademark Trial and Appeal Board

Mar 20, 2008

No. 78764755 (T.T.A.B. Mar. 20, 2008)

Decision Mailed:
March 20, 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Max Rohr, Inc.
________

Serial No. 78764755
_______

Charles W. Grimes and Jessica S. Rutherford of Smith, Grimes &
Battersby LLP for Max Rohr, Inc.

Jay C. Besch, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Hohein, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Max Rohr, Inc. has filed an application to register on
the Principal Register in standard character form the mark
"KAUFFMAN" for "cigars, little cigars, roll-your-own tobacco,
pipe tobacco and smokeless tobacco" in International Class 34.1
Registration has been finally refused under Section
2(e)(4) of the Trademark Act, 15 U.S.C. §1052(e)(4), on the

1 Ser. No. 78764755, filed on December 1, 2005, which is based on an
allegation of a bona fide intention to use such mark in commerce.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78764755
2
ground that the mark which applicant seeks to register is
primarily merely a surname.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
As an appropriate starting point for analysis, we
observe that as stated by the Board in In re Hamilton
Pharmaceuticals Ltd., 27 USPQ2d 1939, 1940 (TTAB 1993):
At the outset, it is well settled that
whether a mark is primarily merely a surname
depends upon whether its primary significance
to the purchasing public is that of a
surname. The burden is upon the Examining
Attorney, in the first instance, to present
evidence sufficient to make out a prima facie
showing in support of the contention that a
particular mark is primarily merely a
surname. Provided that the Examining
Attorney establishes a prima facie case, the
burden shifts to the applicant to rebut the
showing made by the Examining Attorney. See
In re Harris-Intertype Corp., 518 F.2d 629,
186 USPQ 238, 239-40 (CCPA 1975) and In re
Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d
831, 184 USPQ 421, 422 (CCPA 1975). Whether
a term sought to be registered is primarily
merely a surname within the meaning of ...
the Trademark Act must necessarily be
resolved on a case by case basis and, as is
the situation with any question of fact, no
precedential value can be given to the amount
of evidence apparently accepted in a prior
proceeding. See In re Etablissements Darty
et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed.
Cir. 1985). ....

Moreover, as set forth by the Board in In re United Distillers
plc, 56 USPQ2d 1220, 1221 (TTAB 2000):
Among the factors to be considered in
determining whether a term is primarily
merely a surname are the following: (i)
whether the surname is rare; (ii) whether
anyone connected with applicant has the
involved term as a surname; (iii) whether the
term has any other recognized meaning; and
(iv) whether the term has the "look and feel"
Ser. No. 78764755
3
of a surname. See In re Benthin Management
GmbH, 37 USPQ2d 1332[, 1333] (TTAB 1995).2

In the present case, we agree with the Examining
Attorney that, contrary to applicant's contentions in its initial
and reply briefs, the record contains sufficient evidence to make
a prima facie case that the primary significance of the mark
"KAUFFMAN" to the purchasing public for applicant's goods is that
of a surname. Specifically, in order to establish the surname
significance of the term "KAUFFMAN," the Examining Attorney in
his brief relies upon in the following evidence which is of
record in support of the refusal to register: (i) the results of
a person locator search on January 18, 2007 of the "LexisNexis"
database, using the search request "LAST-NAME (%!N%KAUFFMAN)" to
search the "P-FIND" file in the "FINDER" library, which found a
total of 9,480 listings of individuals with the surname
"KAUFFMAN" in the United States, with the first 100 of such
results printed out in detail; (ii) an excerpt from the
"lookwayup.com" website, located on or about January 18, 2007,
which defines "Kauffman" as meaning "[l]ast name, frequency rank
in the U.S. is 1732"; (iii) the results of a person locator
search on June 5, 2006 of the Internet, using the "LYCOS" search
engine to search for "White Pages" listings of "People" with the
"Last Name: KAUFFMAN," which found a total of 8,328 listings of
individuals with the surname "KAUFFMAN" in the United States,

2 A fifth factor, which concerns whether a mark is in a stylized form
distinctive enough to create a separate non-surname impression, is not
present herein inasmuch as applicant seeks to register its mark in
standard character form. See In re Benthin Management GmbH, supra at
1333-34.
Ser. No. 78764755
4
with the first 130 of such results displayed in full;3 (iv) the
results of a search on June 5, 2006, and repeated on or about
January 18, 2007, of the "RhymeZone" website,4 using a search of
"Word: Kauffman" to "Find definition" thereof, which retrieved

3 Applicant, in its reply brief, faults the Examining Attorney for
having "attached only 100 listings from the LexisNexis® database and
only 110 [sic] listings from the [LYCOS] PeopleSearch database" as
part of the evidentiary record. However, as set forth in TMEP Section
710.01(a) (5th ed. 2007):

When evidence is obtained from a research database,
the examining attorney does not have to make all stories of
record. It is sufficient to include only a portion of the
search results, as long as that portion is a representative
sample of what the entire search revealed. In re Vaughan
Furniture Co. Inc., 24 USPQ2d 1068, 1069 n.2 (TTAB 1992).
See also In re Federated Department Stores Inc., 3 USPQ2d
1541, 1542 n.2 (TTAB 1987).

Here, it appears that representative samples were made of record by
including, respectively, the first 100 and first 130 results obtained.
While applicant, in its reply brief, also criticizes such evidence
because two entries "in the [LYCOS] PeopleSearch database appear to be
two listings for the same person" and, likewise, seven pairs of
entries "from the LexisNexis® database appear to be for the same
persons," some minor duplication of entries is to be expected in
virtually any data compilation. Moreover, and aside from applicant's
unexplained mathematical calculations (for us, 9,480 entries less
seven pairs of duplicate names leaves 9,466 listings from the
LexisNexis database and 8,328 entries minus two duplicate names equals
8,326 listings in the LYCOS "PeopleSearch" database), we find that
even allowing for some duplication, applicant's further assertion in
its reply brief (as set forth below) that there are "significantly
fewer" discrete listings in each database than the results found
simply is highly speculative and does not cast doubt as to the
probative value of such evidence:

Given that the remaining 9,380 and 8,318 listings from the
respective databases are likely to contain similarly
duplicative listings, it is unclear from the Examining
Attorney's evidence exactly how many discrete listings exist
for people with the surname "KAUFFMAN." If any conclusion
can be drawn from the Examining Attorney's partial evidence,
it is that the actual number of discrete individuals with
the surname "KAUFFMAN" is significantly fewer than the
number of total results found in either the LexisNexis® or
[LYCOS] PeopleSearch databases.

4 As shown by the screenprint thereof, such website invites users to
"[t]ype in a word ... to find its rhymes, synonyms, definitions, and
more."

Ser. No. 78764755
5
as "Definitions of Kauffman:" only the following: "name: A
surname (common: 1 in 14285 families; popularity rank in the
U.S.: #1732)"; and (v) the results of a search on or about
January 18, 2007 of Merriam-Webster's Online Dictionary, which
for the word "Kauffman" stated that "[t]he word you've entered
isn't in the dictionary."
Applicant argues in its initial brief that the evidence
of record with respect to the term "KAUFFMAN" "confirms that the
term's use as a surname is exceedingly rare" and that,
"[a]ccordingly, the purchasing public is unlikely to consider the
term's surname significance to be its primary significance." We
agree with the Examining Attorney, however, that such evidence
suffices to demonstrate that the surname "KAUFFMAN" is not rare.
As to applicant's assertion, among other things, that the number
of individual listings located in the computerized databases is
quite small in both instances, the Examining Attorney, citing In
re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004), correctly notes
that in any comparison of "the number of listings of the surname
in a computerized database with the total number of listings in
that database" for all surnames, "even the most common surname
would represent only a small fraction of such a database."
Moreover, in this case, two other sources indicate that despite
its rank of 1732 in frequency, the surname "KAUFFMAN" is not only
considered common enough to be ranked, but is still regarded as
being a "common" surname in the United States. Consequently,
while we find that, at a minimum, the surname "KAUFFMAN" is not
rare, the Examining Attorney also properly points out that even
Ser. No. 78764755
6
if such surname were considered to be rare in the United States,
"that fact would not per se preclude a finding that a term is
primarily merely a surname" inasmuch as:
Even a rare surname may be held primarily
merely a surname if its primary significance
to purchasers is that of a surname. See In
re Etablissements Darty et Fils, 759 F.2d 15,
225 USPQ 652 (Fed. Cir. 1985) (DARTY held
primarily merely a surname); In re Rebo High
Definition Studio Inc., 15 USPQ2d 1314 (TTAB
1986) (DARTY held primarily merely a
surname); In re Pohang Iron & Steel Co.,
Ltd., 230 USPQ 79 (TTAB 1986) (POSTEN held
primarily merely a surname).

Applicant next faults the Examining Attorney for having
"failed completely to proffer any evidence with regard to the ...
factors" of whether anyone connected with applicant has the
surname "KAUFFMAN" and whether such term has the "look and feel"
of a surname. Although, to be sure, the Examining Attorney has
the burden of ascertaining, typically pursuant to an inquiry
pursuant to Trademark Rule 2.61(b),5 whether anyone connected
with applicant organizationally or in the design, manufacture or
production of its goods has the surname "KAUFFMAN," the absence
on this record of any information that an officer or employee of
applicant has such a surname, unlike the contrary situation, is
neutral inasmuch as it does not tend to establish one way or the
other whether the surname would be perceived as primarily merely
a surname. See In re Gregory, supra.

5 Such rule specifies that: "The examiner may require the applicant to
furnish such information and exhibits as may be reasonably necessary
to the proper examination of the application." While applicant could,
of course, have simply laid the matter to rest by indicating in either
of its briefs whether anyone of significance in its corporate
structure has the surname "KAUFFMAN," applicant has not done so.
Ser. No. 78764755
7
As to whether the term "KAUFFMAN" has the "look and
feel" of a surname, applicant contends in its initial brief that,
in addition to the asserted lack of any evidence from the
Examining Attorney tending to support such factor, it is obvious
that there are many words in the English language that end in "-
MAN" but which are not regarded as surnames. The Examining
Attorney, in response, persuasively maintains, however, that:
Although it is true that there are many
English words ending in "-MAN" that are not
primarily, merely surnames, it is likely that
these words have recognized meanings in
dictionaries and/or other recognized and well
accepted English language references. Where
the term ending with "-MAN" does not have any
recognized meaning, [including] geographic
meaning, and is shown to be a surname with
numerous listings nationwide, the examining
attorney contends that [such] term has the
"look and feel" of a surname. In the instant
case, the evidence shows that the term
"KAUFFMAN" has no meaning in English
dictionaries, and has ... [instead numerous]
listings in [two] national databases of
surnames. This evidence from Merriam-Webster
Online [Dictionary, LYCOS] and LEXIS-NEXIS
... supports the position that the mark has
the look and feel of a surname, and rebuts
applicant's contention that the examining
attorney provided no evidence with respect to
the "look and feel of a surname" factor in
determining if the term "KAUFFMAN" is
primarily, merely a surname.

Thus, while the absence of any evidence in this record as to the
factor of whether anyone connected with applicant has the surname
"KAUFFMAN" is neutral rather than in applicant's favor, the
evidence which is properly of record herein favors a finding, as
urged by the Examining Attorney, in the affirmative with respect
to the factor of whether the term "KAUFFMAN" has the "look and
feel" of a surname.
Ser. No. 78764755
8
Finally, as to the factor of whether such term has any
other recognized meaning, applicant--for the first time--contends
in its initial brief that the term "KAUFFMAN" has non-surname
significance which is its primary significance to the American
consumer. Specifically, citing attachments to its initial brief
consisting of (i) an excerpt from "Wikipedia" for the term
"Kaufmann" which states, inter alia, that "Kaufmann is a surname,
with many variants such as Kauffmann, Kaufman, and Kauffman. In
German, the name means merchant" and lists various individuals
with such surnames (emphasis in original) and (ii) a German
language excerpt from an online "Deutsch-Englisch" dictionary at
"http://dict.leo.org" which translates "Kaufmann" from the German
"der Kaufmann" into English as variously meaning "dealer,"
"merchandiser," "merchant," "trader" and "tradesman," applicant
insists that:
In light of the type of goods Applicant
intends to associate with its mark, the
primary significance of Applicant's KAUFFMAN
mark is not a surname. .... Rather, the
mark is most likely to be perceived by the
purchasing public as a misspelling or variant
of the German term "Kaufmann" meaning
merchant, dealer, merchandiser, trader or
tradesman. As the attached evidence
demonstrates, the term KAUFFMAN is a common
misspelling of the term "Kaufmann." In
German, a "Kaufmann" refers to a business
person, merchant or one involved in trade.
In this way, the mark is suggestive of the
type of person likely to purchase Applicant's
cigars, little cigars, roll-your-own tobacco,
pipe tobacco and smokeless tobacco, namely, a
business person.

The Examining Attorney, however, has objected to
consideration of such evidence, requesting in his brief that the
Ser. No. 78764755
9
Board "disregard the evidence submitted with and attached to
Applicant's Appeal Brief ... since it was not made of record
prior to appeal." Citing, inter alia, Trademark Rule 2.142(d) in
support of his objection, the Examining Attorney maintains that
"[i]t is well settled that the record in any application must be
complete prior to appeal."6 Nonetheless, in the event that the
objection is overruled, the Examining Attorney has discussed the
merits of applicant's evidence and the argument presented with
respect thereto. Although applicant, citing TBMP §1207.03 (2d
ed. rev. 2004),7 contends in its reply brief that, in view
thereof, such evidence should be considered to be of record
because "the Examining Attorney discusses the evidence and treats
it as being of record," the cited section of the TBMP plainly is
not applicable in situations where, as here, the Examining
Attorney has interposed an objection to the timeliness of the
evidence.
We concur with the Examining Attorney that the evidence
accompanying applicant's initial brief is indeed untimely and,
therefore, sustain the objection to further consideration
thereof. Trademark Rule 2.142(d) and TBMP §1207.03 (2d ed. rev.

6 Such rule, which states that "[t]he record in the application should
be complete prior to the filing of an appeal," also provides in
relevant part that the Board "will ordinarily not consider additional
evidence filed with the Board by the appellant or by the examiner
after the appeal is filed."

7
Specifically, such section indicates in pertinent part that:
"Evidence submitted after appeal, without a granted request to suspend
and remand for additional evidence may be considered by the Board,
despite its untimeliness, if the nonoffering party (1) does not object
to the new evidence, and (2) discusses the new evidence or otherwise
affirmatively treats it as being of record."

Ser. No. 78764755
10
2004). We hasten to add, however, that even if we were to
consider such evidence, it would not make any difference in the
result of this appeal.
Having sustained the Examining Attorney's objection,
the sole evidence which we may properly consider with respect to
the factor of whether the term "KAUFFMAN" has any other
recognized meaning consists of the results of a search on or
about January 18, 2007 of Merriam-Webster's Online Dictionary,
which stated for the word "Kauffman" that "[t]he word you've
entered isn't in the dictionary." Such negative dictionary
evidence supports the Examining Attorney's position that the term
"KAUFFMAN" has no recognized English meaning other than its
surname significance. The sole and hence primary significance of
the term "KAUFFMAN" is thus its surname significance.
Based on consideration of the factors discussed above,
of which three favor the refusal to register and the fourth is
neutral, a prima facie case has been shown that the term
"KAUFFMAN" is primarily merely a surname. Applicant, moreover,
has failed to rebut such showing. We accordingly conclude that
because the term "KAUFFMAN" is a surname which (i) is not rare,
(ii) has the "look and feel" of a surname and (iii) has no
recognized meaning other than its surname significance, the
primary significance of such term to the purchasing public for
applicant's goods is that of a surname.
Decision: The refusal under Section 2(e)(4) is
affirmed.