Last week, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office reversed an examining trademark attorney who refused to register the RENATI mark based on its significance as a surname. As a Florida Trademark Attorney with an active trademark prosecution docket, this is a noteworthy case that I will keep in mind when I get "surname" refusals in the future.
It is not uncommon for the U.S. Patent and Trademark Office to refuse to register a mark based on the fact that the mark is primarily a surname. The reasoning behind this is explained by Judge Seeherman in her concurrence in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007), the "purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames,... Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses..." Thus, there is a public policy of keeping surnames open for use.
In this case, the Trademark Trial and Appeal Board (TTAB) reviewed the evidence, which showed only 6 people in United States with the RENATI surname and therefore only 6 people in the United States that could potentially be adversely affected by the RENATI registration. This turned out be the main factor considered in the TTAB decision of last week.
Some of the other factors considered by the TTAB include whether anyone connected with the applicant uses the trademark as a surname, whether the trademark has any recognized meaning other than as a surname and whether the trademark has the look and feel of a surname. The TTAB found, in light of the evidence, the applicant did use the trademark as a surname, the trademark does have a recognized meaning as a given name and that the trademark did not have the look and feel of a surname. In sum, the factors considered weighed in favor of allowing the trademark to register. Therefore, the TTAB reversed the examining attorney's refusal to register the mark.
