Adding Initials to a Surname Does Not Necessarily Create a Protected Trademark
In a recent precedential decision, the TTAB held that the addition of one initial —or possibly even more than one initial—in front of a surname does not necessarily create the impression of a personal name. Rather, the Board held that a surname plus one or more initials may remain “primarily a surname” and, as such, cannot be registered on the Principal Register without proof of acquired distinctiveness. Whether an ‘initial(s) plus surname’ mark is or is not primarily a surname is a matter of factual inquiry rather than one susceptible of purely legal analysis.
In In Re Color in Optics, Ltd. (No. 87558653, Feb. 7, 2020), Applicant Jade Hutton applied for the mark “J HUTTON” for use on eyewear, although no evidence suggested that she went by or was recognized by “J Hutton.” The Board noted that her signature on the consent authorizing the use of her name was “Jade Hutton” and there was no evidence that consumers were aware of “J HUTTON” as a designation of a particular person. Instead, in support of her application, Hutton submitted several examples of instances in which the Trademark Office had allowed registration on the Principal Register of marks comprising an initial plus a surname. Nevertheless, the examiner decided that because the mark J HUTTON was primarily a surname (See 15 U.S.C. § 1052(e)), it was not eligible for registration on the Principal Register, and Hutton appealed to the TTAB.
The TTAB reiterated the general test employed to determine whether a mark is primarily a surname as outlined in In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) emphasizing that the enumerated factors were neither exhaustive nor dispositive (citing Azeka Building Corp. v. Azeka, 122 USPQ2d 1477, 1480 (TTAB 2017)):
the degree of a surname’s rareness;
whether anyone connected with applicant has that surname;
whether the term has any recognized meaning other than that of a surname;
whether the term has the “structure and pronunciation” of a surname; and,
whether the stylization of lettering is distinctive enough to create a separate commercial impression.
While Item 5 was irrelevant for a text mark, items 1-4 all militated in favor of a finding that the applicant’s mark was primarily a surname. Indeed, as to factor (2), the applicant had, in fact, submitted a consent to the use of her name as a mark.
The TTAB reiterated that there was no per se rule regarding the circumstances under which an “initial plus surname” mark would be eligible for registration on the Principal Register and distinguished between Hutton’s applied-for mark and those marks that had been allowed on the Principal Register despite having a structure of initials plus a family name. In the chief examples discussed by the TTAB, the use of the applicant’s initials in combination with their last name represented the day-to-day name used by the applicant and by which the applicant was recognized. These facts demonstrated that such a personal name/surname combination designated a specific and particular person whereas a minimally-modified surname not actually used by the applicant did not. Thus, the mark J. J. YELEY was registered on the Principal Register to NASCAR driver J. J. Yeley, a decision bolstered by the use of two initials rather than one, and by the relative rarity of the surname Yeley. See In re J.J. Yeley, 85 USPQ2d 1150, 1054 (TTAB 2007). Similarly, P. J. FITZPATRICK INC. was determined to be “an entire personal name, not ‘merely’ a surname” (slip. Op. at 6, citing In re P.J. Fitzpatrick, Inc., 95 USPQ2d 1412, 1413 (TTAB 2010)), where the Board observed that the use of two initials rather than one “typically will convey a commercial impression of a personal name, and thus generally will not be primarily merely a surname.” (slip op. at 7, citing Fitzpatrick at 1413). The Board was, however, clear that there was no per se rule regarding the addition of initials to surnames (id., citing Yeley at 1154) and that “[i]n all cases involving a surname preceded by one or more initials, it is the factual record that matters most, because only from such a record can we make reliable findings about consumer perception.” (slip op. at 8).
Since there was no evidence in the record that the applicant actually went by “J Hutton” rather than “Jade Hutton” or that she was recognized as such, there was “no evidence here that J Hutton is perceived as a personal name by the relevant consumers” – a finding further bolstered by the fact that even the consent form signed by the applicant used “Jade Hutton” rather than “J Hutton” as her printed name and signature. (slip op. at 6-8). Because the relevant inquiry was fundamentally factual, the examples cited by the applicant regarding other marks allowed on the Principal Register were neither apposite (because the factual circumstances of the reasons behind the marks’ allowance was not always clear) nor were the examiners’ determinations binding on the TTAB.
This decision is a reminder that simply because it is your name, it cannot necessarily function as a trademark. The statutory requirement that a surname, with or without added initials, functions as a source indicator only through proof of acquired distinctiveness is still intact.