Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE ADVANCED SPINE FIXATION SYSTEMS INCORPORATED
Serial No. 73/815,997
November 3, 1992
Mario A. Martella of the firm of Beehler & Pavitt for applicant.
Susan K. Leslie
Trademark Examining Attorney
Law Office 7
(David Shallant, Managing Attorney)
Before Sams, Rice and Quinn
Members
Opinion by Quinn
An application has been filed by Advanced Spine Fixation Systems Incorporated to register the mark SELBY for "medical equipment for use in spinal fixation systems, namely the implanted components and tooling for installation and replacing the same." [FN1] The application includes a "consent for registration" signed by David Selby, M.D.
The Trademark Examining Attorney has refused registration under Section 2(e)(3) of the Act, 15 U.S.C. 1052(e)(3), on the ground that the matter sought to be registered is primarily merely a surname. [FN2] Applicant has appealed. Applicant and the Examining Attorney have filed briefs. An oral hearing was not requested.
The Examining Attorney's argument is that "Selby" is a surname, pointing to the evidence of record, including the consent of Dr. Selby to registration by applicant. The Examining Attorney concludes that "Selby" has no meaning other than as a surname, and that purchasers would perceive "Selby" as a surname. In support of her position the Examining Attorney has made of record excerpts from thirteen city telephone directories which contain over 250 listings for individuals with the surname "Selby," and excerpts of nineteen articles taken from the NEXIS data base which contain references to additional individuals with this surname. The Examining Attorney also has submitted an excerpt from American Surnames which indicates that "Selby" is a surname of English derivation, meaning "sallow copse" (i.e., a thicket or growth of willows).
In response to this showing applicant has submitted an article authored by David Selby, M.D. which appeared in a medical publication. Moreover, applicant claims that its mark has acquired distinctiveness under Section 2(f). Applicant essentially argues that "Selby", due to the "professional recognition and distinction" which Dr. Selby has achieved, has acquired distinctiveness in the trade; that is to say, the fact that "Selby" refers to a particular living individual known in the trade negates the surname significance. Applicant states as follows:
There is no doubt that the name "Selby" is a surname and to the average consumer the name "Selby" may well appear to be only that, i.e., a surname..... The issue, however, is not whether "Selby" is a surname to the average retail consumer, but whether the term "Selby" is primarily merely a surname to those sophisticated orthopedic surgeons who are concerned with diseases of the lumbar spine.... the term "Selby" has achieved distinctiveness and renown with those persons constituting the marketing group to which these products are intended.
*2 The Office has the burden of establishing a prima facie case that a term is primarily merely a surname. In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed.Cir.1985). A term is primarily merely a surname if its primary significance to the public is that of a surname. In re Luis Caballero, S.A., 223 USPQ 355 (TTAB 1984). We believe that the Examining Attorney has met her burden in this case. The telephone directories and excerpts from the NEXIS data base show that a substantial number of persons have been exposed to the surname "Selby". There is nothing of record to suggest that "Selby" has any significance other than as a surname and, in fact, applicant recognizes its surname significance to the general purchasing public. That the relevant purchasing public here is a sophisticated one, namely orthopedic surgeons, does not change our conclusion that "Selby" would be perceived as primarily merely a surname, even by orthopedic surgeons. Moreover, that the surname "Selby" means "sallow copse" does not detract from the primary surname significance. Many surnames of foreign origin have obscure meanings which lose out to the primary surname significance. Few people, if any at all, could be expected to know that the surname "Selby" means "sallow copse".
Applicant's argument is, essentially, that SELBY is no longer primarily merely a surname because the significance of the term is now that of a mark for its goods, that is to say, that the surname has acquired distinctiveness. At the outset, we need to decide a preliminary skirmish between applicant and the Examining Attorney as to whether a claim of acquired distinctiveness has been timely raised in this appeal.
Applicant, in responding to the initial surname refusal, asserted that "Selby" has "become distinctive" of applicant's goods. (June 5, 1990 response, p. 5). In a later response, applicant contended that it "provided evidence of distinctiveness of the mark 'Selby'." (March 14, 1991 response, p. 6). Although the Examining Attorney twice made a suggestion that applicant amend its application to seek the benefits of Section 2(f), no formal amendment was filed and no consideration was given to the sufficiency of the evidence of acquired distinctiveness by the Examining Attorney. In its appeal brief, applicant asserts that "[w]hile no formal claim of distinctiveness has been made in this application under Section 2(f) of the Act, applicant proffers such a claim at this point, although proof of distinctiveness has in fact been submitted and argued extensively in the record." (brief, p. 2). Applicant then goes on to argue the merits of its claim.
The Examining Attorney, in her appeal brief, contends that the claim of acquired distinctiveness is untimely since it was made "for the first time in the brief on appeal." (brief, p. 4). The Examining Attorney asserts that in view of applicant's failure to file a formal amendment under Section 2(f), the merits of such a claim were not explored during the prosecution phase of this proceeding. The Examining Attorney, in her brief, nevertheless addresses the merits of applicant's claim of acquired distinctiveness, indicating that the evidence of record falls short of showing acquired distinctiveness.
*3 There is nothing in the Act, the Trademark Rules of Practice or the Trademark Manual of Examining Procedure that requires an applicant to specifically set forth in its application that registration is being sought under the provisions of Section 2(f). An applicant, when confronted with a surname refusal under Section 2(e)(3), may argue that the proposed mark is not primarily merely a surname and/or that if it is, it has acquired distinctiveness as an indication of origin for its goods. Trademark Rule 2.41(a) provides that
[w]hen registration is sought of a mark which would be unregistrable by reason of Section 2(e) of the Act but which is said by applicant to have become distinctive in commerce of the goods set forth in the application, applicant may, in support of registrability, submit ... in response.... to a refusal to register.... evidence tending to show that the mark distinguishes such goods. (emphasis added).
Section 1212.05(a) of the Trademark Manual of Examining Procedure (1986) provides that "[a]n application should contain an indication of intent to base registration on acquired distinctiveness, in conformity with the provisions of Section 2(f). This section goes on to state, in relevant part, as follows:
This indication can take a variety of forms. For example, a statement that registration is requested in accordance with Section 2(f); a statement that the mark has become distinctive, or that applicant believes the mark has become distinctive of the goods or services in commerce; the statement relative to 5 years use in commerce as suggested in Section 2(f); a statement that evidence is being submitted in support of acquired distinctiveness. (emphasis added).
We believe that the Examining Attorney has emphasized form over substance. In evaluating an applicant's right of registration, the Examining Attorney has the obligation to consider all of the arguments and evidence submitted in support of registration, whether or not a specific reference is made in the application to Section 2(f), so long as applicant has in one form or another stated that the mark has become distinctive. See: In re DeSoto, Inc., 172 USPQ 497 (TTAB 1972). In the present case, we find that applicant's references to acquired distinctiveness were adequate to indicate that a claim under Section 2(f) was being made in the involved application. Accordingly, we turn to the merits of this claim.
In claiming that the proposed mark has acquired distinctiveness, applicant asserts that the "more traditional showings" under Section 2(f) are not available. Applicant states that the goods are subject to governmental approval (i.e., Food and Drug Administration) and that due to the restricted distribution to the limited market of orthopedic surgeons, there has been no appreciable advertising. Notwithstanding the above, the name "Selby," applicant contends, has special meaning to orthopedic surgeons specializing in diseases of the spine. Applicant points out that it is the only source of the products available under the mark SELBY, that it is the only source authorized by Dr. Selby to use the mark, and that acquired distinctiveness is confirmed by the "acclaim and recognition accorded to Dr. Selby as an orthopaedic surgeon." (applicant's brief, pp. 13-14).
*4 We find that the record falls short of proving that Selby has acquired distinctiveness for applicant's spinal fixation systems. The only evidence in support of applicant's claim of acquired distinctiveness is an article titled "Internal Fixation with Knodt's Rods" authored by Dr. David Selby which appeared in a medical publication titled Clinical Orthopaedics and Related Research. As shown by the table of contents, a large number of doctors authored other articles regarding "internal fixation of the lumbar spine." The one article relied upon by applicant does not establish the notoriety of Dr. Selby in connection with the goods listed in the application. In point of fact, the article refers to rods used in fixation procedures as "Knodt's rods." Moreover, we do not even know the extent of the distribution of Dr. Selby's article. There simply is no evidence, such as affidavits or declarations from Dr. Selby or others, to support the notoriety which applicant has claimed for him. In the absence of confirmation of the alleged widespread recognition of Dr. Selby in the field of orthopedic medicine and of the extent to which such recognition, if shown, carries over to the spinal fixation instruments necessary to perform the surgical procedures, registration under Section 2(f) must be refused.
Applicant has argued that there is a conflict between the notion that a living individual's name has achieved renown in a defined sphere of activity apart from any trademark usage, requiring a consent to register, and the proposition that the same individual's name is primarily merely a surname and is thus not registrable. On the contrary, there is no conflict here. Applicant filed a letter of consent to register with the application. The Examining Attorney requested that it be withdrawn because it was believed it was unnecessary in the case of a mere surname. However, when applicant indicated that it was claiming that the name in question was recognized in the field of medicine as referring to a particular individual, the Examining Attorney reinstated the consent to register. Under Section 2(c) of the Trademark Act, matter which consists of or comprises a name, portrait, or signature identifying a particular individual may not be registered in the absence of that person's written consent to registration in order to avoid a potential conflict under Section 2(a). Recognition that the name identifies a particular living individual is not the same as saying that the name of that individual is so associated with the goods identified in the application to register that it has become distinctive of or has acquired secondary meaning in connection with those goods.
In sum, the claim and evidence of acquired distinctiveness falls short of rebutting the Examining Attorney's evidence that SELBY is primarily merely a surname.
Decision: The refusal to register is affirmed.
J.D. Sams
J.E. Rice
T.J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/815,997, filed July 31, 1989, alleging first use on July 17, 1989.
FN2. The Examining Attorney also had refused registration on the ground that the proposed mark is the generic name for the goods. However, this refusal subsequently was withdrawn and, thus, the issue is not before us.