Surname Opposition (MILLER v. MILLER, 91184841 (TTAB 1-7-2013))

Surnames are often refused registration under a type of merely descriptive refusal often called a surname refusal. Sometimes the refusal can be overcome by a showing of acquired distinctiveness under Section 2(f).

In this case, the mark was not refused by the trademark examiner but was opposed by a party using a very similar name although likelihood of confusion was not a claim in this proceeding. Pieces of the proceeding are below, the whole proceeding can be found at http://e-foia.uspto.gov/Foia/ReterivePdf?system=TTABIS&flNm=91184841-01-07-2013


Standing

“ In this case, opposer has established that it has a commercial interest in using MILLER LAW GROUP and derivations thereof to identify services that are essentially identical to those recited in the involved application. Further, opposer's commercial interest demonstrates competitive need to use the wording MILLER LAW GROUP for services that are the same as those recited in applicant's involved application. We find that because opposer has demonstrated its usage and competitive need of the wording comprising the MILLER LAW GROUP mark, opposer has established its standing to oppose applicant's mark. See, e.g., Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981) ("It is clear that use of a term in a descriptive sense is sufficient to impart standing to oppose federal registration of a descriptive "word, name, symbol, or device" as a trademark. . . ."); Golomb v. Wadsworth, 592 F2d 1184, 201 USPQ 200, 201 (CCPA 1979) (damage sufficient to establish standing to oppose a registration "presumed or inferred when the mark sought to be registered is descriptive of the goods and the opposer or petitioner is one who has a sufficient interest in using the descriptive term in its business"); Saint-Gobain Abrasives, Inc. v. Unova Industrial Automation Systems, Inc., 66 USPQ2d 1355, 1357 (TTAB 2003) ("plaintiff has alleged the interest necessary to bring these proceedings by asserting its competitive uses of stripes and bands in various colors including the colors yellow and blue on abrasive wheels and disks").

Additionally, applicant sent cease and desist letters to opposer asserting applicant's rights in the applied-for mark and "objecting to Opposer's use of Opposer's Name." (Second Amended Notice of Opposition, Para. 38.) These cease and desist letters provide additional evidence that opposer has business interests that have been affected, i.e., a real interest in the proceeding, and thus, has standing. See Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974 (TTAB 1988) (cease and desist letter coupled with plaintiff's use of mark sufficient to establish standing). We further note that applicant does not dispute opposer's standing to bring the above-referenced opposition proceeding.”


Surname Claim

"The test for determining whether a mark is primarily merely a surname is the primary significance of the mark as a whole to the purchasing public." In re Hutchinson Tech. Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988) (footnote omitted). "The question of whether a word sought to be registered is primarily merely a surname within the meaning of the statute can be resolved only on a case by case basis." In re Establissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985). We typically look to four factors in determining whether a mark's primary significance to the public is as a surname:

(1) whether the surname is rare;

(2) whether anyone connected with applicant has the involved term as a surname;

(3) whether the term has any other recognized meaning; and

(4) whether the term has the "look and feel" of a surname.

See In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009); In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000), citing In re Benthin Management Gmbh, 37 USPQ2d 1332 (TTAB 1995).[fn8] The Board considers each of these factors independently with respect to the term "Miller." If we determine the public would perceive the term primarily as a surname, we will then determine if the disclaimed terms "Law Group" cause us to alter that determination.




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We suggest our service and our plan-a Not Just Patents Five-Part Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

*We do not stop here but this is a good start.

If you have already received a refusal, we can provide services that include a quick and economical Response to Office Action (ROA). See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.



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