The U.S. Trademark Trial and Appeal Board upheld the Examining Attorney’s refusal to register the mark J HUTTON for eyeglasses and sunglasses on the ground that the mark is primarily merely a surname.
In general, a mark that is “primarily merely a surname” cannot be registered on the Principal Register absent a showing of acquired distinctiveness, i.e., a showing that consumers understand the proposed mark as a trademark and not just a surname. The test for determining whether a mark is primarily merely a surname is very fact specific and ultimately depends on the primary significance of the mark to the purchasing public. In this case, the Examining Attorney presented evidence that Hutton was the 1925th and 1836th most common name in the U.S. in 1999 and 2000, that the name appeared 26,379 times in the LEXIS ADVANCED® surname database, and that Applicant’s founder and CEO is named Sanford Hutton. In response, the applicant submitted evidence of third-party trademarks consisting of surnames preceded by one or more initials that had been registered without first proving acquired distinctiveness. The applicant also admitted that Hutton was the surname of its Chief Creative Officer, Jade Hutton, but presented no evidence that Ms. Hutton also goes by or is known as “J Hutton.”
The TTAB analyzed various factors in upholding the refusal, such as: (1) the degree of the surname’s rareness, (2) whether anyone connected with the applicant has the surname, (3) whether the term has any recognized meaning other than as a surname, and (4) whether the term has the “structure and pronunciation” of a surname. For the first factor, the TTAB found that the Examining Attorney’s evidence showed that the Hutton surname was “not rare” in the U.S. On the second factor, the TTAB noted that the applicant conceded that Hutton is the surname of Jade Hutton and other evidence showed that the Hutton name was also associated with the applicant’s founder, Sanford Hutton. On the third and fourth factors, the TTAB noted there was no evidence in the record of other meanings of the word Hutton, and the applicant did not contend that Hutton lacks the structure and pronunciation of a surname.
Instead, the applicant argued that the J HUTTON mark as a whole refers to and identifies an individual, Jade Hutton. In rejecting this argument, the TTAB noted that “the question is not what J HUTTON means” to the applicant, “[t]he question is what it means to relevant consumers.” The TTAB then compared this case to In re J.J. Yeley, 85 USPQ2d 1150 (TTAB 2007), in which the TTAB found that the mark J.J. YELEY was not primarily merely a surname. In that case, Mr. Yeley (a well-known NASCAR driver) submitted a declaration explaining how the J.J. YELEY mark was used, noting that many other NASCAR drives used their names as trademarks for various goods. Given this, and Mr. Yeley’s popularity, the TTAB found that J.J. YELEY had a recognized meaning as a trademark. The Board also found that Yeley was a rare surname and that J.J. YELEY had the “look and sound” of a personal name because it included two initials. In contrast, the applicant in this case did not submit a similar declaration, just a consent from Jade Hutton to use J HUTTON. There also was no evidence that consumers identified Ms. Hutton as J Hutton. On the record before it, the TTAB therefore found that the J HUTTON mark was primarily merely a surname and upheld the refusal to register.
The case is In re Color in Optics, Ltd., Serial No. 87558653 (TTAB Feb. 7, 2020).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
