Examination Guide 4-89 (Oct. 16, 1989)

Examination Guide No. 4-89: Surname Refusals

MEMORANDUM

DATE: October 16, 1989

TO: All Trademark Attorneys

VIA: David E. Bucher, Director

Trademark Examining Operation

FROM: James T. Walsh

Administrator for Trademark Policy and Procedure

SUBJECT: Examination Guide No. 4-89: Surname Refusals

The purpose of this examination guide is to clarify Office policy concerning

surname refusals under Trademark Act Section 2(e)(3), 15 U.S.C. Section 1053(e)(3),

in view of two recent decisions, In re Hutchinson Technology, Inc., 853 F.2d 552, 7

USPQ2d 1490 (Fed. Cir. 1988) and In re Harris Corp., Ser. No. 648019 (TTAB July 25,

1989). Specifically, the focus of this guide is the treatment of marks which include

word elements in addition to a word which, standing by itself, would be regarded as

primarily merely a surname.

In Hutchinson Technology, the Court of Appeals for the Federal Circuit held that

the mark HUTCHINSON TECHNOLOGY was not primarily merely a surname when considered as

a whole. The goods were computer products. The Court held that the Office must

evaluate the mark as a whole to determine whether it is primarily merely a surname.

The Court also held that "technology" was not merely descriptive but remanded the

case for entry of a disclaimer of "technology" before publication.

In Harris, The Trademark Trial and Appeal Board held that HARRIS GRAPHICS was not

primarily merely a surname, when viewed in its entirety. The goods were printing

products. The applicant had disclaimed "graphics." The Board concluded, "While the

term 'graphics' may have been disclaimed by applicant and may not be a term

susceptible of exclusive appropriation by someone in the printing field, we do not

believe the situation presented here is readily distinguishable from Hutchinson."

Harris, Slip opin. at 7.

In keeping with the referenced decisions, examining attorneys should adhere to the

following policies in acting on applications for marks which include wording in

addition to a word which, standing by itself, would be regarded as primarily merely

a surname.

1. If the wording combined with the surname is incapable of functioning as a mark,

the examining attorney [p.2] should refuse registration on the grounds that the

entire mark is primarily merely a surname. See In re E. Martinoni Co., 189 USPQ 589

(TTAB 1975).

2. If the wording combined with the surname is capable matter, for example,

suggestive or merely descriptive matter, the examining attorney should not refuse

registration under Section 2(e)(3). If the additional wording is merely descriptive

or the equivalent, and a disclaimer is otherwise proper, the examining attorney

should require a disclaimer of the additional wording.

Examining attorneys should apply these policies in acting on all new applications

and in acting on pending applications. The policies stated here supersede all

previous policy statements on this subject.

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