Precedential No. 5: TTABlog Test - Is ATWELL SUITES Primarily Merely A Surname For Hotel Services?

• Published date: 10 February 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

Have you heard of anyone named Atwell? Me neither. The USPTO refused registration of ATWELL SUITES, in standard character and (slightly) stylized form, for various hotel-related services [SUITES disclaimed] on the ground that ATWELL SUITES is primarily merely a surname under Section 2(e)(4). Applicant's survey evidence and its linguistics expert's testimony missed the mark, but what about rareness? What about public exposure to the name? Does "Atwell" look and sound like a surname? How do you think this came out? In re Six Continents Limited, Serial Nos. 88430142 and 88430162 (February 7, 2022) [precedential] (Opinion by Judge Marc A. Bergsman).

The Board looked to the inquiries set forth in Etablissements Darty et Fils in considering the Section 2(e)(4) issue, noting that these inquiries are not exclusive nor set forth in order of importance:

• Whether Atwell has a non-surname, "ordinary language" meaning;
• The extent to which Atwell is encountered as a surname;
• Whether Atwell is the surname of anyone connected with the applicant;
• Whether the public may perceive Atwell, in the alternative, to be primarily a meaningless, coined term; and
• Whether Atwell has the structure and pronunciation of a surname.

The Board's analysis proceeds "from the perspective of the purchasing public because 'it is that impact or impression which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance.'" In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239 (CCPA 1975) (quoting Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm'r Pat. 1955)).

When the mark comprises a surname and another term, the Board must determine whether the added term alters the primary significance of the mark as a whole. See Earnhardt v. Kerry Earnhardt, Inc., 123 USPQ2d at 1415 (citing In re Hutchinson Tech. Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)).

Examining Attorney William H. Dawe III submitted excerpts from the LexisNexis surname database, a Wikipedia page for the Atwell surname listing 18 purportedly "notable" people, and Internet website excerpts referring to people named Atwell, including British actress Hayley Atwell, who has "achieved considerable renown" by appearing in the Marvel Comics Captain America and Avengers movie series. [never heard of her - ed].

As to any non-surname meaning of Atwell, applicant's expert opined, without evidence, that the word has a "metaphorical meaning akin...