Troon Ltd.

Trademark Trial and Appeal Board

Jan 5, 1999

No. 74696177 (T.T.A.B. Jan. 5, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 5, 99
Paper No. 12
RFC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Troon LTD.
________
Serial No. 74/696,177
_______
Eric S. Hyman of Blakely, Sokoloff, Taylor & Zafman for
TROON LTD.
John C. Tingley, Trademark Examining Attorney, Law Office
102 (Myra Kurzbard, Managing Attorney).
_______
Before Cissel, Seeherman and Wendel, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 3, 1995, applicant filed the above-referenced
application to register the mark “KILBY” on the Principal
Register. The application was based on applicant’s
assertion that it possessed a bona fide intention to use
the mark in commerce on “film, video games, pre-recorded
video tapes, computer software, clothing, mugs, lunch
boxes, posters, book covers and toys.” The identification-
Ser No. 74/696,177
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of-goods clause was subsequently amended to read as
follows: “motion picture film containing dramatic
presentation, pre-recorded video tapes containing dramatic
presentation and computer software for use in multimedia
entertainment.”
This application is now before the Board on appeal
from the final refusal to register under Section 2(e)(4) of
the Act on the ground that the mark sought to be registered
is primarily merely a surname.
In support of the refusal to register, the Examining
Attorney made of record a list of people whose surname is
“Kilby.” The list was the product of a search the
Examining Attorney conducted of the PHONEDISC USA database.
It shows that there are 1,453 entries for people who have
the surname “Kilby.”
Applicant contends that the primary significance of
“KILBY” to the purchasing public is not that of a surname.
In support of its contention, applicant submitted telephone
directories from three southern California areas. None
shows even a single individual whose surname is “Kilby.”
Applicant argues further that the number of hits from the
PHONEDISC database shows that “Kilby” is a quite rare
surname in view of the fact that the total database
contains over eighty-three million names.
Ser No. 74/696,177
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Along with the final refusal to register, the
Examining Attorney made of record excerpts from the Nexis
database of periodical publications. The results of the
search of that database show that “KILBY” was located over
thirty-seven hundred times. Most of the examples provided
by the Examining Attorney show “Kilby” used as a surname.
The search results also include references to “Kilby
Street,” “Kilby Avenue,” and the “Kilby patent.”
Applicant attached to its brief copies of more
information from the same Nexis search the Examining
Attorney had conducted. Those excerpts include references
to the “Kilby correctional facility” and examples of
“Kilby” as a given name or a middle name. Ordinarily, the
record closes with the filing of the notice of appeal, and
such late-filed evidence would not be considered unless the
application had been remanded to the Examining Attorney
under Trademark Rule 2.142(d) for consideration of it. In
this case, because the Examining Attorney did not object to
the additional evidence, and in fact made arguments as if
it had been considered, the Board has considered it as if
it had been properly made of record.
The Examining Attorney also filed a brief, but no oral
hearing was requested. Accordingly, we have decided this
Ser No. 74/696,177
4
appeal on the written record and arguments of applicant and
the Examining Attorney.
The sole issue before us in this appeal is whether the
mark applicant intends to use, “KILBY,” is primarily merely
a surname within the meaning of Section 2(e)(4) of the
Lanham Act. The test for resolving this issue is well
settled. A term is unregistrable under this section of the
Act if its primary significance to the relevant purchasing
public is that of a surname. In re BDH Two, Inc., 26
USPQ2d 1556 (TTAB 1993); In re Hutchinson Technology, Inc.,
852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988). The
Examining Attorney has the burden of establishing this. In
re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 832, 184 USPQ
421 (CCPA 1975); In re Establissements Darty et Fils, 759
F.2d 15, 225 USPQ 652 (Fed. Cir. 1985).
The Examining Attorney met his burden in the instant
case. The evidence submitted from the PHONEDISC search, as
well as the excerpts from the Nexis database, establish
that the primary significance of “KILBY” is that of a
surname to the ordinary consumers who are the potential
purchasers of the goods set forth in the application.
Although it cannot be characterized as a common surname,
such as “Smith” or “Jones,” the evidence shows that this
surname appears in directories and newspapers throughout
Ser No. 74/696,177
5
the country. Additionally, the mark “KILBY,” unlike the
mark “GARAN,” has the appearance and sound of a surname,
rather than an arbitrary term. See: In re Garan, 3 USPQ2d
1537 (TTAB 1987); and In re Industrie Pirelli, 9 USPQ2d
1564, (TTAB 1988). In sum, the evidence of record shows
that “Kilby” is a surname, and that it would be perceived
as one by consumers.
Although applicant contends that the consuming public
would not understand the primary significance of “KILBY” to
be as a surname, applicant has offered no persuasive
alternative connotations or significance for the term. The
evidence that “Kilby” is used on rare occasions as a given
or middle name is not inconsistent with its primary
significance as a surname. Surnames are sometimes used in
this manner, just as surnames are used as key parts of the
names of streets, housing developments, correctional
facilities and so forth, indicating the surnames of the
people for whom they are named. In re Harris-Intertype
Corp., 518 F.2d 629, 186 USPQ 238 (CCPA 1975).
In order to prevail in the face of the prima facie
case of surname significance made by the Examining
Attorney, applicant's burden was to establish that the
significance of “KILBY” would not be primarily merely that
of a surname, but applicant did not meet this burden. In
Ser No. 74/696,177
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the absence of persuasive evidence that the surname sought
to be registered would have some other significance to the
prospective purchasers of applicant’s films, tapes and
software or that it would be likely to be viewed as an
arbitrary term, we have no basis upon which to disagree
with the Examining Attorney. Accordingly, the refusal to
register is affirmed, and registration to applicant is
refused.
R. F. Cissel
E. J. Seeherman
H. R. Wendel
Administrative Trademark Judges
Trademark Trial & Appeal Board
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