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DICKMAN'S Pickles: Just Another Unregistrable Surname

The US Trademark Trial and Appeal Board has, again, explained how and when surnames may function as trademarks. In re Enumclaw Farms LLC, Application Serial No. 85942195 (TTAB June 24, 2016). This blog has discussed this topic in the past, but the facts in this most recent case are worth another post.

In this case, the trademark examining attorney had refused registration of the mark DICKMAN’S for “fruit-based spread; jellies and jams; marmalade; pickled fruit; pickled vegetables; pickle; preserved fruit and vegetables; preserved fruit; processed food; processed vegetables and fruits” under Section 2(e)(4) of the Trademark Act on the grounds that the mark was primarily merely a surname. Under US trademark law, a word which is considered “primarily merely a surname” cannot be protected and registered as a trademark without evidence that the name has been in long and exclusive use which has changed its significance to the public from merely the surname of an individual to a source identifying mark for particular product or service. In this case, The Board agreed with the examiner that there was insufficient evidence presented to demonstrate that DICKMAN’S had acquired the distinctiveness necessary to make this transition.

The five factors the Board identified as those to be considered in determining whether a mark functions primarily merely as a surname were:

  • the frequency and exposure to the public of the mark being used as a surname ;
  • whether anyone connected with the applicant has the mark as a surname;
  • whether the mark has the structure and pronunciation of a surname;
  • whether the mark has any recognized meaning other than as a surname; and
  • whether the manner in which the mark is displayed might negate any surname significance.

The applicant and the examining attorney agreed that there was no one connected with the applicant using DICKMAN or DICKMAN’S as a surname, that there was no particular display of the mark relevant to the application that would negate surname significance, and that there was no alternative meaning for the term “dickman.”

With regard to the factor involving the prevalence of the use of DICKMAN  as a surname, the Board found that “a significant number of persons with this surname” existed so that there could be little question of public exposure to the significance of the term as a surname. Applicant had submitted evidence from the US Census Bureau which showed 5,682 people with this surname, and that it ranked 5,601 on the list of common surnames. The Board stated that although the number of persons with the survey surname represented a small percentage of the total US population, that  was “inconsequential” as long as the evidence sufficiently demonstrated that consumers were likely to primarily understand DICKMAN'S as a surname. The Board further agreed that the possessive ending on the mark reinforced its surname significance since consumers, when viewing the mark on goods, would interpret it as suggesting that the goods were prepared and sold by someone with the surname “Dickman.” Thus, the refusal to register was affirmed.

In most cases, a surname is chosen as a trademark for vanity reasons because there is someone associated with the business using that surname. In this matter, that appears not to have been the case. Thus, the lesson, again, is that a trademark must be chosen carefully and vetted fully before time and money are invested in it. As this case demonstrates, even a  surname which is not very common will be refused registration if it is primarily understood by the public to function as a surname. Accordingly, choose your marks wisely and well.

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Susan Neuberger Weller manages the Trademark & Copyright Practice at Mintz. Susan assists clients with securing and protecting IP assets across the globe. She's worked with clients in a variety of industries, including pharmaceuticals, medical devices, software, electronics, and entertainment.