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When is a Surname, not just a Surname?

By Wendy K. Marsh

In a recent decision, the Trademark Trial and Appeal Board (TTAB) reversed the trademark examiner's refusal to register the mark P.J. FITZPATRICK, INC. on the basis the proposed mark was primarily merely a surname and therefore not registerable as a trademark. In re P.J. Fitzpatrick, Inc., 95 U.S.P.Q.2d 1412 (T.T.A.B. 2010).

The TTAB determined that FITZPATRICK by itself could only function as a surname, and the inclusion of "INC." was not sufficient by itself to transform P.J. FITZPATRICK, INC. from just a surname into a trademark. However, the applicant successfully persuaded the TTAB that the addition of the initials "P.J." were enough to transform FITZPATRICK from just a surname to a trademark. In its decision, the TTAB noted that many well known people use two initials in lieu of a given name, citing such examples as O.J. Simpson and J.D. Salinger. The Board also discussed the prior decision of In re I. Lewis Cigar Mfg. Co., 205 F.2d 204 (C.C.P.A. 1953) whereby the Court found that, "a single initial added to a surname could never convey something other than surname significance."

The Board held that, "if a mark consists of two initials (or more) coupled with a surname, it typically will convey a commercial impression of a personal name, and thus generally will not be primarily merely a surname." Thus, the TTAB concluded that the public would perceive P.J. FITZPATRICK as a given name, and not just a surname, and reversed the trademark examiner's previous decision that the mark could not be registered.



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