Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE GARAN, INCORPORATED
Serial No. 566,560
July 1, 1987
Hearing: April 9, 1987
Harold James and Robert L. Epstein for applicant
Mark Traphagen
Trademark Examining Attorney
Law Office 5
(Paul Fahrenkopf, Managing Attorney)
Before Allen, Krugman and Cissel
Members
Member
Before us is an appeal from the Trademark Examining Attorney's final refusal [FN1] to register the term GARAN for 'hosiery' under Section 2(e)(3) of the Trademark Act, 15 U.S.C. § 1052(e)(3) (1976) on the ground that it is primarily merely a surname. In support of the refusal, the Examining Attorney has introduced listings of six individuals named 'Garan' from the July, 1984 Scranton Metropolitan (one); Detroit September, 1983 (two); [FN2] Cleveland 1984-1985 (two); and Oahu Feb., 1986 (one) telephone directories; a transcript from Mead Data Central's NEXIS database of a November 1983 broadcast of The MacNeil/Lehrer News Hour, mentioning a medical researcher named 'Dr. Hasan Garan;' [FN3] and a copy of page 544 from the 'Random House College Dictionary' (undated) showing the absence of a listing of a 'garan' therein. [FN4]
On the inside of the file jacket (file wrapper cover) there appear handwritten indications in ink of some 39 cities and areas located in the United States, each followed by the notation '=0.' [FN5] We infer from this listing that Examining Attorney Arant looked for but found no listings of 'Garan' in the telephone directories for these cities and areas. [FN6]
In its behalf, appellant has introduced its annual report for the year ending September 30, 1985 and an affidavit of its board chairman, Seymour Lichtenstein dated June 19, 1986.
Appellant also contends that its existing four Principal Register registrations of GARAN ought to be considered. Although no copies are in the file, appellant claimed ownership of Registration Nos. 585,668, 1,169,432, 1,320,885 and 1,193,674 for the mark GARAN in the application now on appeal and referred to details concerning them in its February 18, 1986 response to the first Office action. In response thereto on June 12, 1986, Examining Attorney Arant stated as follows:
As to applicant's contention that its ownership of four other registrations for 'GARAN' on the Principal Register entitles it to registration of the subject mark without resort to Section 2(f) the undersigned Examining Attorney disagrees. While it is true that prior registrations are not to be ignored, the interpretation of Section 2(e)(3) and applicable case law requires that since the term 'GARAN' has no primary meaning other than that of a surname registration must be refused. Applicant's prior registrations would be a relevant factor in establishing distinctiveness or secondary meaning under Section 2(f). In re Calzaturificio Munari 197 USPQ 564 (TTAB 1977). Further, a high degree of consumer recognition of applicant's mark does not mean that there is a drastically lesser surname significance than other marks. The high degree of consumer recognition bears on the issue of distinctiveness or secondary meaning not on the term's primary significance. (Emphasis added.)
*2 While we agree with Examining Attorney Traphagen, brief 4, that a mere citation of registrations, without copies thereof, is usually insufficient to make them of record, e.g., In re Wells Fargo & Co., 231 USPQ 106, 108 note 7 (TTAB 1986), the above treatment of appellant's contention by the previous Examining Attorney prior to the filing of the appeal, without any objection having been raised at any time during prosecution concerning the absence of copies, is tantamount to a stipulation that appellant is the owner of four Principal Register registrations of the mark GARAN for other goods or services and that the Examining Attorney considered them.
Both parties have filed briefs and both participated in an oral argument of the issues at a hearing held for this purpose. We reverse.
Appellant is a major clothing manufacturer whose stock is traded on the American Stock Exchange. Its sales during the three years ending September 30, 1985, totalled almost half a billion dollars. It has used the mark GARAN on clothing other than hoisiery for nearly 30 years in various forms as illustrated by the labels depicted below:
The mark was adopted as a fanciful and arbitrary word without any established meaning and, according to Mr. Lichtenstein was derived from the word 'guarantee.' He also stated that no one named 'Garan' has been associated with Garan Incorporated. [FN7]
Since the undisputed evidence indicates the term 'garan' has no meaning other than that of a surname, [FN8] this case raises the difficult question whether it is or is not 'primarily merely a surname' within the meaning of the statute. That there are no other meanings of the name in the English language will not support refusal of registration of the surname under the 'primarily merely a surname' statutory language unless the average member of the purchasing public would, upon seeing it used as a trademark, recognize it as a surname. This rule was first announced by the late Assistant Commissioner Leeds in her landmark decision, Ex parte Rivera Watch Corporation, 106 USPQ 145, 149 (Com'r Pats. 1955), as follows:
There are some names which by their very nature have only a surname significance even though they are rare surnames. 'Seidenberg,' if rare, would be in this class. And there are others which have no meaning--well known or otherwise--, and are in fact surnames which do not, when applied to goods as trademarks, create the impression of being surnames.
It seems to me that the test to be applied in the administration of this provision in the Act is not the rarity of the name, nor whether it is the applicant's name, nor whether it appears in one or more directories, nor whether it is coupled with a baptismal name or initials. The test should be: What is the primary significance to the purchasing public. . . .
The rule has firm support in the Lanham Act's legislative history, especially the remarks of the late Edward S. Rogers, at whose insistence, the word 'primarily' was added to 'merely' with the clear 'intent to draft a provision which would prevent a refusal to register only because a surname was found in a directory to be the name of somebody somewhere.' Id, 106 USPQ at 149; see also 106 USPQ at 148, note 3, citing the pertinent legislative discussion.
*3 Some twenty years later, in In re Kahan & Weisz Jewelry Manufacturing Corp., 508 F.2d, 831, 184 USPQ 421 (CCPA 1975), a case involving facts strikingly similar to those in the one now before us, [FN9] the predecessor of the Court above expressly adopted the Rivera rule and it has since been consistently followed by the Board. See, e.g., In re Pillsbury Co., 174 USPQ 318 (TTAB 1972); E. Vandenburgh, TRADEMARK LAW AND PROCEDURE § 4.50, at note 20 (2d ed. 1968); see generally, S. Smith, 'Primarily Merely,' 63 TRADEMARK REPORTER 24 et seq (Jan.-Feb. 1973). Nothing in In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) changes the rule. In fact, that decision cites Kahan & Weisz and reiterates the rule at 225 USPQ 653:
On the other hand, where no common word meaning can be shown, a more difficult question must be answered concerning whether the mark presented for registration would be perceived as a surname or as an arbitrary term. (Emphasis added.)
Clearly, based on the above, we cannot stop with the directory listings and absence of other meanings, but must evaluate all of the relevant factors.
The six (or seven) directory and NEXIS listings of 'Garan' as a surname have limited persuasive impact in view of the fact these were the only ones found in an enormous NEXIS database [FN10] and some 43 directories of major population centers. [FN11] In this context, we conclude that 'Garan' is an extremely rare surname. While rare surnames may nevertheless be considered to be 'primarily merely' surnames, e.g., In re Possis Medical, Inc., 230 USPQ 72, 74 (TTAB 1986), and cases cited therein, we agree with appellant that the degree of a surname's rareness should have material impact on the weight given the directory evidence. Here, since it appears that the directory and NEXIS evidence shows 'Garan' to be an extremely rare surname, we conclude that the directory and NEXIS evidence only slightly supports the Office's position that GARAN is 'primarily merely a surname.' [FN12]
On analysis, we find all of the other factors either neutral or supportive of appellant's position that GARAN would be perceived by purchasers as an arbitrary term or as the trademark and trade name of appellant. Virtually no exposure of 'Garan' as a surname has been demonstrated (the sole exception being a single passing reference in a single television news program). The appearance and use of GARAN by appellant, i.e. the above labels, is not in a form akin to that of a surname. No individuals are associated with appellant who bear the surname 'Garan'. The name was independently created by appellant as an arbitrary term rather than because of its surname significance. Accordingly, we conclude that a prima facie basis for refusing registration under Section 2(e)(3) on the basis that GARAN is primarily merely a surname has not been made out. [FN13]
*4 Decision: The refusal of registration is reversed.
D. B. Allen
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. The final refusal was entered by Examining Attorney Arant who has since separated from the Office. After the appeal, the file was assigned to Examining Attorney Traphagen.
FN2. Although there are four listings of 'Garan' in this directory, three of them (Daniel L. Garan, Daniel L. Garan atty, Garan Lucow Miller Seward Cooper and Becker atty) obviously refer to a single individual, Daniel L. Garan.
FN3. We agree with appellant, reply brief, 3, that the only part of the NEXIS matter introduced prior to the appeal is the 'Dr. Hasan Garan' reference. The balance of Exhibit B attached to the Examining Attorney's brief is deemed stricken. See, Trademark Rule 37 C.F.R. § 2.142(d) (1986).
FN4. Highlighted on this page are adjacent listings of 'Garamond' and 'Garand rifle.'
FN5. In alphabetical order, the indicated cities and areas are: Atlanta, Baltimore, Bronx, Cincinnati, Charlotte, Chesapeake, Des Moines, Denver, El Paso, Evansville, Houston, Indianapolis, Jacksonville, Kansas City, Knoxville, Little Rock, Maryland, Memphis, Miami, Milwaukee, Minneapolis, Newark, Norfolk, Northern Virginia, Omaha, Philadelphia, Phoenix, Rochester, Raleigh, Saint Louis, St. Paul, Salt Lake City, San Antonio, Savannah, Staten Island, Tampa, Trenton and Witchita.
FN6. Nothing in the file history indicates that the information on the file jacket, showing negative results in 39 of the 43 directories searched, was communicated to applicant. Appellant's counsel stated at oral argument that he was unaware of this information. Nevertheless, since the fact that there were no 'Garan' listings in 39 phone directories favors appellant's position, we obviously cannot ignore it in determining this appeal. See, National Dairy Products Corp. v. Borden Co., 394 F.2d 887, 157 USPQ 227, 230, note 9 (7th Cir. 1968); Metherson-Selig Co. v. Carl Gorr Color Card, Inc., 301 F.Supp. 336, 154 USPQ 265, 279 (N.D. Ill. 1967).
FN7. Lichtenstein asserted that the first time he learned that anyone had the name 'Garan' was just prior to his executing the affidavit when he was informed of this Office's action in connection with the instant application.
FN8. Albeit, Lichstenstein stated the mark was roughly derived from 'guarantee,' in view of the absence of the 'u,' we do not believe 'garan' suggests 'guarantee' to average purchasers and we find no evidence in the file to support the contrary position.
FN9. In Kahan & Weisz there were directory listings of six persons named 'Ducharme'; here there are six named 'Garan' In Kahan & Weisz, the Office offered no other evidence. Here, the only other evidence supporting the Office position is a possible additional surname listing from NEXIS. In both, the terms had no other apparent meanings. Although the point is of negligible importance, we agree with appellant that since the NEXIS print is a transcript of a broadcast, the 'Garan' listing there has questionable probative value as it could be a misspelling of a different name. The Examining Attorney's own submission (Exhibit B to his brief) demonstrates that NEXIS misspellings do occur, [GARAND misspelled in text as 'Garan'] and we believe the possibility is even greater where the NEXIS text is a transcription of a broadcast. However, whether there are six or seven listings is unimportant.
FN10. It appears--see, exhibit B attached to the Examining Attorney's appeal brief--, that the NEXIS search was in the OMNI library which consists of more than 145 files of information from U.S. and overseas newspapers, magazines, journals, newsletters, wire services and broadcast transcripts; more than 21 billion characters of information; and over nine million stories--all in full-text. See, 'Guide to NEXIS and Related Services,' July, 1986, page 307.
FN11. In this regard, we infer that 'Maryland' on the file jacket must refer to the 'Maryland Suburban' directory of the C&P Telephone exchange in the Washington, D.C. metropolitan area and 'Chesapeake' to the directory for the Eastern Shore area of Maryland.
FN12. That the degree of rareness of the surname is material to our determination is corroborated by the legislative history. Thus, during the hearings on H.R. 4744, Rogers made the following statement in support of retaining the word 'primarily' in the language of what is now Section 2(e)(3):
Mr. Rogers. No; I do not think so at all. The difficulty about [Fenning's proposal which would have deleted 'primarily' from the draft] is that almost every word you can think of is somebody's surname, somewhere, and there has been a practice in the office of the Commissioner of Patents, which was born a number of years ago that any mark for which registration was applied, which was borne by some person, somewhere as a name such as Cotton, King, or whatnot, they would refuse registration on the ground that they were merely the names of individuals. It is perfectly all right to refuse registration where the name is a name of a particular individual, but where it falls into the general category that there might be a surname somewhere of that kind, that somebody somewhere may bear that name, it merely limits the field of choice.
3 J. Gilson, TRADEMARK PROTECTION AND PRACTICE, 2-131 (1986).
In fact, limitations on the degree of reliance on directory evidence was recognized even under the Trademark Act of 1905. See, e.g., Ex parte I.G. Farbenindustrie A.G., 3 USPQ 55 (Com'r Pats. 1929), wherein the appearance of 'Printon' in 3 directories but not in 80 others searched by appellant's counsel was held to be on insufficient basis for refusal of the term 'as merely the name of an individual.' While the term was also deemed suggestive in relation to the goods, photographic film, this was not stated to be a factor in the reversal of the surname refusal.
The significance of Roger's point was demonstrated to the writer of this opinion by the fact that the May, 1985 District of Columbia phone directory at his desk contains, on page 259 of the residential section, a phone listing for Kenneth KODAK.
FN13. While facts concerning appellant's existing registrations of GARAN might have corroborated our conclusion, in the sense argued by appellant that other examiners did not perceive GARAN to be a surname, this could only have been established by evidence that the surname issue was either not raised or raised and withdrawn by the persons who examined the applications which resulted in issuance of this registrations. Here, we do not even have the registration copies and even if we had them, the absence of a reference to § 2(f) on any of them (as appellant contends in its brief) would not have been conclusive. The Office has not always printed § 2(f) reference on registrations issued on the basis of that section. See, In re Men's International Professional Tennis Council, 1 USPQ 2d 1917, 1919 (TTAB 1986). However, corroboration is not, in our view, required.
DISSENTING OPINION
*5 Gary D. Krugman
Member
Recognizing that this is somewhat of a close case, I would, nevertheless, hold that the Office has made out a prima facie showing that GARAN is primarily merely a surname and that, in view of the failure of applicant to rebut this prima facie showing, I would affirm the refusal of registration.
There is no question but that GARAN has surname significance in the United States although it is readily conceded that it is a rare, uncommon surname. Telephone directory listings have been made of record evidencing GARAN surname listings in Hawaii, Ohio, Pennsylvania and Michigan. Also properly made of record is an excerpt taken from the NEXIS research database consisting of a portion of a transcript from a 1983 broadcast of the MacNeil/Lehrer News Hour, a nationwide broadcast, in which a medical researcher named Dr. Hassan Garan is mentioned. [FN1] Finally, the Examining Attorney introduced into the record a dictionary reference showing no ordinary word meaning for 'garan.'
While the showing made by the Examining Attorney as to the surname significance of GARAN coupled with the evidence of the lack of significance of the term as an ordinary word is hardly overwhelming, I believe the Examining Attorney's evidentiary showing sufficient, under the relevant case law, to shift the burden to the applicant to rebut that evidence. That the existence of GARAN surnames in the United States is extremely small is not necessarily determinative since even a rare surname is unregistrable if its primary significance to purchasers is that of a surname. In re Possis Medical, Inc., 230 USPQ 72 (TTAB 1986); In re Luis Caballero S.A., 223 USPQ 355 (TTAB 1984); In re Picone, 221 USPQ 93 (TTAB 1984). Moreover, we have consistently declined to hold that a minimum number of telephone directory listings is necessary to establish a prima facie surname significance case. See: In re Petrin Corporation, 231 USPQ 902 (TTAB 1986) and cases cited therein. In my view, the opinion of the majority that, notwithstanding the telephone directory and NEXIS evidence, the mark is not primarily merely a surname because the term would be perceived by purchasers not as a surname but as a arbitrary term is a conclusion not supported by the record. The explanation by applicant that the term GARAN is meant to be a shorthand reference to 'guarantee' is, as the majority notes, unsupported by the evidence. [FN2]
In short, I conclude that the record supports a conclusion that GARAN is recognized as a surname, albeit an uncommon one; that the evidentiary showing is sufficient to make out a prima facie case that GARAN is primarily merely a surname, thus shifting the evidentiary burden to applicant and that applicant has failed to rebut the prima facie showing made by the Examining Attorney.
I would affirm the refusal of registration.
FN1. While not critical to the determination of this case, I disagree with the position of applicant and the majority herein that the reference to Dr. Garan is of questionable probative value since being a transcription of a broadcast, there is a possibility that it could be a misspelling of a different name. While there always exists the possibility of a misspelling in any reference, including telephone directories, in my view it is incumbent upon the party challenging the accuracy of evidence which may easily be verified for accuracy, to put forth evidence of its own which supports its challenge. In this case, it would not have been a difficult task for applicant to verify whether the researcher referred to in the NEXIS excerpt was, in fact, named Dr. Garan or whether his name was misspelled. In the absence of any such showing by applicant, the transcript should be presumed to be accurate.
FN2. See: f.n. 9, supra.