Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA89972
`ESTTA Tracking number:
`07/14/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`78496761
`Ruxton Pharmaceuticals, Inc.
`RUXTON PHARMACEUTICALS
`NICOLE K. MCLAUGHLIN, ESQUIRE
`DUANE MORRIS LLP
`30 South 17th Street
`Philadelphia, PA 19103
`UNITED STATES
`nkmclaughlin@duanemorris.com
`Exhibits
`RUXTON Appeal brief 7-14-06.pdf ( 17 pages )(1645436 bytes )
`RUXTON Exhibits for appeal brief 7-14-06.pdf ( 36 pages )(2828862 bytes )
`Allison Z. Gifford
`azgifford@duanemorris.com
`/Allison Z. Gifford/
`07/14/2006
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BRIEF FOR APPLICANT-APPELLANT
`
`Mark: RUXTON PHARMACEUTICALS
`
`Serial No.: 78/496,761
`
`Nicole K. McLaughlin
`Allison Z. Gifford
`
`Christiane Schuman
`
`Duane Morris, LLP
`Attorneys for Applicant
`
`30 South Seventeenth St.
`
`Philadelphia, PA 19103
`(215) 979-1000
`
`

`
`TABLE OF CONTENTS
`
`Table of Authorities ...................................................................................................................... .. ii
`
`Introduction .................................................................................................................................... ..1
`
`Applicant-Appellant's Mark........................................................................................................... ..1
`
`The Rejection ................................................................................................................................. ..2
`
`Arguments ...................................................................................................................................... ..3
`
`I.
`
`THE EXAMINING ATTORNEY HAS NOT MET THE BURDEN OF
`ESTABLISHING THAT "RUXTON PHARMACEUTICALS" IS PRIMARILY
`MERELY A SURNAME AND THAT ITS PRIMARY SIGNIFICANCE TO
`THE PURCHASING PUBLIC IS THAT OF A SURNAME .......................................... ..3
`
`II.
`
`RUXTON IS AN EXTREMELY RARE SURNAME ...................................................... ..5
`
`III.
`
`IV.
`
`V.
`
`NO INDIVIDUAL WITH THE SURNAME RUXTON IS CONNECTED IN ANY
`WAY TO THE APPLICANT—APPELLANT........................................................... .1. ...... ..9
`
`"RUXTON" HAS SIGNIFICANCE AND HAS MEANING ASIDE FROM
`BEING THE SURNAME OF A SMALL MINORITY OF INDIVIDUALS ................ ..10
`
`EVIDENCE THAT BRAXTON, BUXTON, RUX AND ROXTON ARE SURNAMES
`IS AN INSUFFICIENT BASIS ON WHICH TO SUPPORT THE PROPOSITION
`THAT "RUXTON" HAS THE "LOOK AND FEEL" OF A SURNAME ..................... ..11
`
`Conclusion ................................................................................................................................... .. 14
`
`Table of Exhibits ......................................................................................................................... ..15
`
`

`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`In re Benthin Management GmbH, 37 U.S.P.Q.2d 1332 (TTAB 1995).................................... ..3, 4
`
`In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382 (C.C.P.A. 1968) ............................ ..3
`
`In re Etablissements Darzy et Fils, 225 U.S.P.Q. 652 (Fed. Cir. 1985) ....................................... ..3
`
`In re Garan, 3 U.S.P.Q.2d 1537 (TTAB 1987) ..................................................................... ..11, 12
`
`In re Giger, 78 U.S.P.Q.2d 1405 (TTAB 2006) ...................................................................... ..5-13
`
`In re Harrz's—Intertype Corp, 518 F.2d 629, 186 U.S.P.Q. 238 (C.C.P.A. 1975) .............. .. 5, 10-11
`
`In re Hester Industries, Inc., 230 U.S.P.Q. 797 (TTAB 1986) ..................................................... ..3
`
`In re I. Lewis Cigar Mfg. Co., 205 F.2d 204 (C.C.P.A. 1953) .............................................. ..10—11
`
`In re Industrie Pirelli Societa per Azioni, 9 U.S.P.Q.2d 1564 (TTAB 1988) .............................. ..12
`
`In re Jacques Bernz'er, Inc., 894 F.2d 389 (Fed. Cir. 1990) ......................................................... ..11
`
`In re Monotype Corp, PLC, 14 U.S.P.Q.2d 1070 (TTAB 1989) ............................................. ..3, 9
`
`Ex parte Rivera Watch Corp., 106 U.S.P.Q. 145 (Com'r Pats. 1955) ......................................... ..12
`
`In re Sava Research Corp., 32 U.S.P.Q.2d 1380 (TTAB 1994) ...................................... .. 5, 6, 9-10
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re application of: Ruxton Pharmaceuticals, Inc.
`
`Serial No.: 78/496761
`
`Attorney: Marcie R. Frum Milone
`
`Mark: RUXTON PHARMACEUTICALS
`
`Filed: October 8, 2004
`
`Law Office: 116
`
`BRIEF FOR APPLICANT-APPELLANT
`
`Introduction
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`Applicant-appellant hereby appeals from the Examining Attorney's final refusal to
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`register the above-identified mark, and respectfully requests the Trademark Trial and Appeal
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`Board to reverse the Examining Attorney's decision.
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`AQplicant—Appellant's Trademark
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`Applicant~appe1lant seeks registration on the Principal Register of its mark
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`RUXTON PHARMACEUTICALS
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`for "Pharmaceutical products and preparations for the treatment and prevention of central
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`nervous system diseases, namely neurodegenerative, cognitive, psychiatric and pain disorders;
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`cardiovascular, anti—inflammatory and anti-infective pharmaceuticals and preparations" in
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`International Class 5.
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`

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`The Rejection
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`The Examining Attorney refused registration of Applicant-appellant's mark, contending
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`that the mark is primarily merely a surname and is therefore incapable of serving as an indicator
`of source for the Applicant-appellant's services offered in connection with the mark. I The
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`Examining Attorney's initial refusal relied entirely on the frequency at which the surname
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`"Ruxton" appears in phone listings and directories.
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`In the second and Final Official Action, the Examining Attorney renewed the refusal to
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`register the mark RUXTON PHARMACEUTICALS, accepting that RUXTON is a relatively
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`rare surname but rejecting App1icant—appellant’s arguments that the mark has significance aside
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`from its infrequent occurrence as a surname.
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`Applicant-appellant requested reconsideration before filing its notice of appeal on May
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`15, 2006. In her Letter of Reconsideration, the examining attorney denied reconsideration and
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`continued refusal of registration, maintaining the same arguments and adding additional evidence
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`to support her argument against registration.
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`

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`Arguments
`
`I.
`
`THE EXAMINING ATTORNEY HAS NOT MET THE BURDEN OF
`ESTABLISHING THAT "RUXTON PHARMACEUTICALS" IS PRIMARILY
`MERELY A SURNAME AND THAT ITS PRIMARY SIGNIFICANCE TO THE
`
`PURCHASING PUBLIC IS THAT OF A SURNAME
`
`The Examining Attorney has not met her burden of establishing that the primary
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`significance of the mark RUXTON PHARMACEUTICALS is that of a surname. In her
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`analysis, the Examining Attorney improperly dissected the components of the mark and did not
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`View the RUXTON PHARMACEUTICALS mark in its entirety. The test, however, is Whether
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`the composite mark, in its entirety, is capable of registration. See In re Hester Industries, Inc.,
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`230 U.S.P.Q. 797, n. 5 (TTAB 1986)(THIGHSTIX for boneless chicken parts held not to be a
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`descriptive composite); In re Colonial Stores, Inc., 394 F.2d 549, 157 U.S.P.Q. 382 (C.C.P.A.
`
`l968)(SUGAR & SPICE for bakery products resulted in a composite mark which could not be
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`said to be merely descriptive). For registration to be refused under Section 2(e)(4), the
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`Examining Attorney must make a primafacie showing that the applied—for mark, in its entirety,
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`is primarily merely a surname. In re Benthin Management GmbH, 37 U.S.P.Q.2d 1332, 1333
`
`(TTAB 1995) citing In re Etablissements Darty et Fils, 225 U.S.P.Q. 652, 653 (Fed. Cir. 1985).
`
`Here, App1icant~appellant contends that, regardless of any surname significance of the formative
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`RUXTON, the RUXTON PHARMACEUTICALS mark, viewed as a Whole, does not have
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`primary significance as a surname.
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`Even if one improperly dissects the mark and focuses solely on the formative RUXTON,
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`Applicant-appellant respectfully submits that such term‘s primary significance is not that of a
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`surname. Whether a mark sought to be registered is primarily merely a surname is a question
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`that can only be resolved on a case~by-case basis, and the quantum of evidence which was
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`persuasive in finding surname significance in one case may be insufficient in another because of
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`the differences in the names themselves. In re Benthin Management, 37 U.S.P.Q.2d at 1333; see
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`also In re Monotype Corp., PLC, 14 U.S.P.Q.2d 1070 (TTAB 1989). The burden of proof is on
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`the Examining Attorney to demonstrate that there is sufficient evidence showing that the applied-
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`

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`for trademark is primarily merely a surname. In the evaluation of RUXTON
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`PHARMACEUTICALS, such sufficient evidence has not been presented.
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`There are a number of factors that may be used in determining whether the primary
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`significance of a trademark is that of a surname. TMEP § 1211.01. See In re Benthin
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`Management, 37 U.S.P.Q.2d at 1333-1334. The factors to be considered in the present analysis
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`are (l) The rareness of the surname, (2) Whether anyone connected with the applicant has the
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`mark as his or her surname, (3) Whether the mark has any recognized meaning other than as a
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`surname and (4) Whether the mark has the structure and pronunciation or the "look and feel" of a
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`surname.‘
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`In her first refusal, the Examining Attorney submitted evidence of two prior trademark
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`registrations for RUXTON, U.S. Trademark Reg. Nos. 517,881 and 2,325,991, where the
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`applicants obtained registrations based on acquired distinctiveness under § 2(1) of the Lanham
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`Act. Thus, it would appear that the Examining Attorney is taking the position that RUXTON
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`variant marks are only registerable on a §2(f), or acquired distinctiveness basis. The Examining
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`Attorney did not, however, submit information on the RUXTON mark that is subject of U.S.
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`Trademark Reg. No. 835,99l2. This registration for RUXTON alone was registered on the
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`Principal Register without a §2(f) claim of acquired distinctiveness. Thus, the USPTO has not
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`universally refused registration for RUXTON without a showing of acquired distinctiveness.
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`In the two Official Actions and Letter of Reconsideration, the Examining Attorney
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`offered evidence from phone listings, directories and the Internet in support of her position that
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`RUXTON has no significance other than that as a surname. The insufficiency of this evidence is
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`discussed fully below.
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`1 The fifth factor, whether the mark is sufficiently stylized to remove its primary significance from that of a
`surname, is not relevant in this case as the mark as applied is comprised of block letters with no stylization or
`design.
`
`2 Applicant—appellant notes that the Registration Number given for this mark in its October 12, 2005 response to the
`first Office Action was incorrectly written as "Reg. No. 749,95 1 ." The correct Registration Number is the one
`shown here, 835,991.
`
`

`
`II.
`
`RUXTON IS AN EXTREMELY RARE SURNAME
`
`App1icant~appe1lant submits that RUXTON at best is a very rare surname and that the
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`primary significance of the term to the purchasing public will be that of an identifier of
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`Applicant's pharmaceutical products, not that of a surname.
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`In l1er initial refusal, the Examining Attorney submitted a search of the entire LEXIS
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`NEXIS database of nationwide phone directories that yielded only 117 results of "Ruxton" as a
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`surname. In the second and final Official Action, the same search showed 115 results. At the
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`time these searches were conducted, the LEXIS USFIND Person Locator database contained in
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`excess of 102,000,000 records for the more than 295,734,134 people in the United States. Thus,
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`Ruxton appeared as a surname in only 0.0006% of the USFIND record hits.
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`It must be taken into account that some individuals with the surname “Ruxton" will be
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`listed multiple times but with different addresses or telephone information. These are duplicative
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`listings that should not be counted toward a total number.
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`The Examining Attorney has taken the position that even as few as 100 valid hits for the
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`name Ruxton in these searches may constitute sufficient evidence that the primary significance
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`of the mark is that of a surname. However, in decisions issued by this Board as recently as
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`February, 2006, evidence showing as many as 545 hits for the surname Giger was insufficient to
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`show that the term "Giger" was a common surname. In re Giger, 78 U.S.P.Q.2d 1405 (TTAB
`
`2006)(Although the TTAB ultimately determined that "Giger" was primarily merely a surname,
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`this was due, in part, to the fact that the applicants shared the last name Giger). Applicant-
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`appellant respectfully submits that the nominal amount of listings presented by the Examining
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`Attorney does not constitute "evidence of an unusually large number of listings of a surname."
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`See In re Harrz's—Intertype Corp, 518 F.2d 629, 186 U.S.P.Q. 238, 239 (C.C.P.A. 1975). Indeed,
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`the insignificant number of hits shows that the surname Ruxton is extremely rare.
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`Similarly, in In re Sava Research Corp., this Board reversed the examining attorney's
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`refusal of registration for the mark SAVA on the grounds that the mark was primarily merely a
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`surname. 32 U.S.P.Q.2d 1380, 1381 (TTAB 1994). In reaching this decision, the Board
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`

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`reviewed the evidence submitted by both the applicant and the examining attorney and found that
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`SAVA would not be perceived as primarily merely a surname. In support of the surname refusal,
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`the examining attorney submitted nine excerpts from the NEXIS database of more than 1,700
`available sites containing the term SAVA and a printout from the PHONEDISC U.S.A. database
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`showing that there were at least 100 different SAVAs living in the United States. See id., 32
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`U.S.P.Q.2d at 1380-1381. The applicant countered with evidence supporting registration of its
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`mark by submitting pertinent pages from surname dictionaries and local white pages showing
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`that SAVA was not listed in any of them. See id. In reversing the examining attorney's refusal,
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`the Board found that the evidence the examining attorney gathered from NEXIS and the
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`PHONEDISC database was insufficient to prove that SAVA is primarily merely a surname and
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`to the extent that SAVA could be regarded as a surname, it was a rare one. See id.
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`The issue facing the Board with regard to Applicant-appellant's RUXTON
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`PHARMACEUTICALS mark is similar to the issue presented in Sava. Here, the Examining
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`Attorney has cited fewer than 120 phone entries in support of the mark's surname significance.
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`Applicant~appellant counters this with evidence that Ruxton is not listed as a surname in three
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`surname dictionaries and encyclopedias. Exhibit 13. Additionally, Applicant-appellant offers
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`evidence that there are no surname listings for "Ruxton" in Applicant-appellant's local white
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`pages. Exhibit 2 .
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`Moreover, in an alphabetical search conducted on more than 16,000 surnames, the last
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`name Ruxton does not appear. Exhibit 3 . Similarly, in a "name statistics“ database with nearly
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`100,000 surnames, "Ruxton" is noted as a "very rare last name. Very few last names in the U.S.
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`are Ruxton." Exhibit 4 .
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`In her second and final Official Action, the Examining Attorney provided stories from
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`U.S. newspapers showing RUXTON in connection with the prefixes "Mr." or "Mrs." or "Ms."
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`These particular records are from a wide variety of newspapers and publications that cover the
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`full range of human accomplishments and tragedies (births, deaths, arrests, bankruptcies, local
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`business and sporting news). A total of 15 stories mentioning individuals with the last name
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`3 All exhibits were previously submitted by Applicant-appellant in its responses to Office Actions and Request for
`Reconsideration.
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`

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`Ruxton appear in these records. This number is consistent with the small number of hits in the
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`USFIND and the fact that these people would be having children, attending funerals, engaging in
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`local business and sporting events, having financial difficulties, and running afoul of the law. A
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`mere total of 15 stories out of all of the News stories in the databases covering all aspects of
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`human events and accomplishments are about people with the last name Ruxton. This further
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`shows how rare Ruxton is as a surname.
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`The Examining Attorney attached to her final refusal a list of 7 results from an
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`amazorrcom search showing books that were authored by writers with the last name "Ruxton."
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`This listing shows only three people that have ever authored books under the name "Ruxton."
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`Significantly, not one of these is a U.S. author. Specifically, with regard to hits 1, 2 and 4,
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`Graeme D. Ruxton is a professor at the University of Glasgow in Scotland. With regard to hits
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`3, 6 and 7, George Fredrick Ruxton was a lieutenant in the British army. As to hit 5, Ian Ruxton
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`is a British author from Cambridge living and writing in Japan.
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`Also attached to the final refusal was a page from ancestry. com, which states that the
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`history of Ruxton as a surname is unknown, but that it may be related to a town of Roxton in
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`Bedfordshire, England. Additional pages submitted from ancestry. cam show that there are only
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`1 or 2 families currently with the name of Ruxton in Maryland, and only 161 total historical U.S.
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`immigrants (individuals, not families) with the last name. Only 998 people were identified
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`historically in census counts with the name Ruxton.
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`The Examining Attorney submitted a page with information about a genealogy book, first
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`published nearly a century ago, covering nearly 200 "prominent" families by last name. The
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`"Ruxton" family is listed in this "old-fashioned book," not as a last name, but to identify a single
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`family that immigrated to the United States from Europe. Thus, this submission only shows that
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`"Ruxton" may be a surname. It does not show that its primary significance is that of a surname.
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`This is particularly true in the United States, where registration of the RUXTON
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`PHARMACEUTICALS mark is sought.
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`The Examining Attorney provided pages found through a Google search for "Ruxton."
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`One cached page shows "Ruxton‘s Trading Post," a store on the Ruxton Creek in Colorado. The
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`Creek and the store were named after the explorer Frederick Ruxton (George Frederick Ruxton),
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`7
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`

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`who is also the author of the books listed in the Examining Attorney's submitted amazon.c0m
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`results as hits 3, 6 and 7. The second cached page is a biography page for Graeme Ruxton and
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`provides information about the University of Glasgow professor who authored the books that are
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`amazoncom hits 1, 2 and 4. The third cached page has two mentions about translations of a
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`Japanese book done by Ian Ruxton, the author of amaz0n.c0m hit 5. The book is being studied
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`by students at Cambridge in the UK. The Examining Attorney's search in bartZeby.c0m, an
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`online book retailer much like amaz0n.c0m, reveals only one listing of "Ruxton," and refers to
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`the same author, George Frederick Ruxton, found in amazoncom hits 3, 6 and 7. Thus, this
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`search result is merely a repeat, albeit an abbreviated one, of that conducted in amazoncom.
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`The Examining Attorney submitted a page from the "Ruxton family Genealogy Forum"
`showing information on 1 or 2 Ruxton family trees. The postings relate to the 19“ century and
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`substantially all of them are from England. Moreover, the same authors are responsible for
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`several posts to the forum.
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`The Examining Attorney submitted an obituary for a James Ruxton, born in Scotland in
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`1908. With regard to the legacy of the Ruxton family name, it died with him. It is clear from the
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`obituary that James Ruxton had no children or male siblings. His two sisters married and took
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`their husbands’ names.
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`A page submitted from the "House of Names" website shows the "Ruxton Family Crest"
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`and notes that the name and crest were first found in Lancshire, England. Importantly, the page
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`also notes that the settlers of "this name or some of its variants" were individuals with the last
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`name Rushton, and not "Ruxton."
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`The New York Times "movie" page submitted shows one actor, Richard Ruxton, who
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`appeared in two movies in the 1980's. Ruxton, however, is not the actor's real last name. Based
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`on the information available from Google, this actor is not a member of a Ruxton family. He
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`was born Dick McClung but later chose the screen name Richard Ruxton. Exhibit 5. It is
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`common in the entertainment business for performers to select screen names that are uncommon
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`or unique, so as to distinguish themselves from others.
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`The Examining Attorney attached to the second and final refusal 11 pages and 234 years
`
`of family history on one family, the Chenoweths, who descend from Thomas Chenoweth and
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`8
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`

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`Rachel Ruxton Moore. Ruxton is only present in this family's history as a middle name, and
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`even then only appears in descendants’ names from the late 18”‘ century.
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`Finally, in the Letter of Reconsideration in which the Examining Attorney denied
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`reconsideration of the RUXTON PHARMACEUTICALS trademark, new evidence was offered
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`showing a "Ruxton tartan exists and was submitted by a Ruxton from California." This new
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`evidence merely shows that one individual in the state of California posted on the Internet a
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`patterned cloth used to make a Scottish kilt. While this may be significant in Scotland, where
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`family tartans and kilts enjoy popularity, this submission does not support the argument that the
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`surname represented by the tartan is incapable of trademark registration in the U.S.
`
`The evidence submitted by the Examining Attorney shows that an exhaustive search was
`
`performed to find uses of "Ruxton" as a surname. Nevertheless, the search performed in public
`
`records databases, newspaper stories and the Internet, covering nearly two centuries and two
`
`continents worth of genealogy, revealed, at most, 150 hits for the name Ruxton, many of which
`
`represent duplicates. More importantly, a substantial number of these hits have little or no
`
`significance in the U.S. The presence of RUXTON as a last name in Europe and abroad will not
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`likely have any impact on prospective consumers in the United States. See In re Sam, 32
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`U.S.P.Q.2d I380 (The Board gave little weight to the fact that SAVA had significance in foreign
`
`countries).
`
`Ruxton is, at best, an extremely rare surname and therefore analysis of this first Benthin
`
`factor weighs in favor of Applicant-appellant. Although this factor alone is not dispositive, when
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`added to the other factors weighing in Applicant-appellant's favor, it supports the position that
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`the RUXTON PHARMACEUTICALS mark is not primarily merely a surname.
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`III.
`
`NO INDIVIDUAL WITH THE SURNAME RUXTON IS CONNECTED IN ANY
`WAY TO THE APPLICANT-APPELLANT
`
`The Applicant-appellant maintains, as it did in its prior responses and Request for
`
`Reconsideration, that there is no one within Applicant-appellant's corporation or that is employed
`
`by it that possesses the surname "Ruxton." Indeed, the founders and employees of Ruxton
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`Pharmaceuticals do not know any individual with the surname Ruxton. This Board has held in
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`

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`past citable decisions that if the term at issue is not in fact the name of any person associated
`
`with or employed by an applicant, then such fact is evidence that the term is not primarily merely
`a surname. See, e.g., Monotype Corp, 14 U.S.P.Q.2d 1070 (TTAB 1989); see also In re Sava,
`
`32 U.S.P.Q.2d 1380 (mark SAVA for secure communications systems held not primarily merely
`
`a surname because, among other factors, no one associated with or employed by the applicant
`
`had the surname SAVA).
`
`In her Official Actions and in the Letter of Reconsideration, the Examining Attorney did
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`not dispute the fact that no individual with the surname Ruxton is affiliated in any way with the
`
`Applicant—appellant. This factor therefore weighs in favor of the Applicant-appellant and
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`evidences that Ruxton is not primarily merely a surname.
`
`IV.
`
`"RUXTON" HAS SIGNIFICANCE AND HAS MEANING ASIDE FROM BEING THE
`SURNAME OF A SMALL MINORITY OF INDIVIDUALS
`
`The Examining Attorney's argument that RUXTON PHARMACEUTICALS is primarily
`
`merely a surname because there are no other meanings of the word "Ruxton" is without merit for
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`two reasons: First, because as described in further detail below, Applicant—appellant has
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`submitted evidence of other meanings of the term "Ruxton." Second, and alternatively, even if
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`this Board were to reject the evidence showing meanings of the term other than as a surname,
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`registration may not be refused merely because the term has no other meaning.
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`"Ruxton" has significance other than that of a surname. A Google search for "Ruxton"
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`was conducted on March 14, 2006, in advance of Applicant-appellant's Request for
`
`Reconsideration. The search returned nearly a half million results. Of the first 30 hits reviewed,
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`many are businesses incorporating "Ruxton" in their names. Few of these businesses appear to
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`be named for an individual or family with the name "Ruxton." Exhibit 6. Indeed, the selection
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`of "RUXTON" for the names of many of these entities appears to be geographic or fanciful (e. g.
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`"Ruxton Country School" in Maryland and "Ruxton Media Group"). This is contrary to the
`
`Examining Attorney's position that Ruxton is a surname and is only a surname, and therefore has
`
`10
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`

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`no significance as anything but a surname. See In re Harris—Intertype, 518 F.2d 629, 186
`
`U.S.P.Q. 238 (C.C.P.A. 1975).
`
`Registration may not be refused for lack of another meaning of the applied-for mark. In
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`the context of a § 2(e)(4) refusal, "merely" is synonymous with "only," meaning that the question
`
`is whether the significance of the mark is "primarily only a surname." See, e.g., In re I. Lewis
`
`Cigar Mfg. Ca, 205 F.2d 204, 206 (C.C.P.A. 1953). Even if the Examining Attorney maintains
`
`the position that there is no other meaning of "Ruxton" in the English language, this alone does
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`not support a refusal of registration of the surname under the "primarily merely a surname"
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`statutory language unless the average purchasing public would, upon seeing it used as a
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`trademark, recognize it as a surname. In re Garan, 3 U.S.P.Q.2d 1537 (TTAB 1987).
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`Ruxton is not only a surname. It also has significance as a geographic term, as it is the
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`name of a town and creek in Colorado and a city in Maryland. Exhibit 7.
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`(Applicant-appellant
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`maintains that despite its significance as a geographic term, the relevant consuming public will
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`not assume that "Ruxton" is where RUXTON PHARMACEUTICALS is located or where its
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`products originated. See In re Jacques Bernier, Inc., 894 F.2d 389 (Fed. Cir. 1990). Ruxton
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`Pharmaceuticals is located in Lutherville, Maryland and to date, its products have all originated
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`in Baltimore.)
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`Ruxton was also the name of a front-wheel drive model car popular in the 1930's. "The
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`Ruxton" car was a short chapter in American automotive history, but one with the distinction of
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`being among the first of America's front-drivers. The Ruxton may still be seen at car shows and
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`exhibitions today. Exhibit 8.
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`Additionally, and as a matter of policy, the contention that Ruxton is unregisterable
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`because it has no significance other than that of a surname creates a disincentive for companies
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`or individuals to select unique, arbitrary or even fanciful words as marks, for fear that that
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`registration will be barred because the mark selected may be the surname of some people, albeit
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`a rare or antiquated one.
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`RUXTON therefore has significance outside of being an extremely rare surname.
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`Therefore, this Benthin factor Weighs in favor of the Applicant-appellant.
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`ll
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`

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`V.
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`EVIDENCE THAT BRAXTON, BUXTON, RUX AND ROXTON ARE SURNAMES
`IS AN INSUFFICIENT BASIS ON WHICH TO SUPPORT THE PROPOSITION
`THAT "RUXTON" HAS THE "LOOK AND FEEL" OF A SURNAME
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`RUXTON, when Viewed with the mark RUXTON PHARMACEUTICALS in its entirety,
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`does not give the impression of being a surname because it does not have the look and feel of a
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`surname. RUXTON PHARMACEUTICALS does not have a "cue" such as initials, the prefixes
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`Mr. or Ms., the suffixes "and sons" or "and family," or the possessive form.
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`The fact that RUXTON is a Very rare surname does not support the conclusion that
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`RUXTON has the "look and feel" of a surname. "There are some names by which their very
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`nature have only a surname significance even though they are rare surnames .
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`.
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`. and there are
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`others which have no meaning ~ well known or otherwise —- and are in fact surnames which do
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`not, when applied to goods as trademarks, create the impression of being surnames." Ex parte
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`Rivera Watch Corp., 106 U.S.P.Q. M5, 149 (Com'r Pats. 1955).
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`In the present case, it cannot
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`be assumed that the purchasing public will recognize the mark as a surname based on exposure
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`to the surname use. See In re Garan, 3 U.S.P.Q.2d at 1540. In the case of rare surnames, there
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`is no evidence that relevant purchasers would be "preconditioned" to perceive RUXTON as a
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`surname. Id., citing In re Industrie Pirelli Societa per Aziorzi, 9 U.S.P.Q.2d 1564 (TTAB 1988).
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`In the denial of Applicant~appellant's Request for Reconsideration, the Examining
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`Attorney offered additional evidence to support the position that RUXTON has the "look and
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`feel" of a surname. The Examining Attorney attached to the Letter "additional evidence of
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`similar names to emphasize the fact that RUXTON has the look and sound of a surname."
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`Specifically, the Examining Attorney has submitted that "Braxton," "Buxton," "Rux," and
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`"Roxton" are all recognized surnames that are similar to Ruxton.
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`Without offering additional evidence to rebut this argument, Applicant—appellant submits
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`that there are a myriad of famous trademarks, such as KODAK®, that may also be surnames.
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`Although "Kodak" may be a surname, it is also heralded as being a "strong" trademark because it
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`is inherently distinctive or "fanciful." There are many other famous trademarks that become
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`surnames by simply changing one letter. For example, by taking the well—known INTEL®
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`12
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`

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`trademark and adding one letter, one may come up with the surnames "Fintel" or "Gintel." By
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`changing a single letter of the INTEL® mark, you get surnames such as "Antel," "Istel," or
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`"Insel." This fact traverses the Examining Attorney's argument that a trademark is unregisterable
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`because changing one or two letters of that mark may give the mark the "look and feel" of a
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`surname.
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`Moreover, the determination of whether a mark has the "look and feel" of a surname is
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`based on a culmination of the other factors: In this case, the Board should consider whether there
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`are individuals with the last name Ruxton, whether "Ruxton" has any other known significance,
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`and whether Ruxton is the surname of an individual affiliated with the Applicant-appellant. See
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`In re Giger, 78 U.S.P.Q.2d 1405. As set forth fully above, each of these factors weighs in favor
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`of App1icant—appe1lant. Therefore, the RUXTON formative of the trademark RUXTON
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`PHARMACEUTICALS does not have the look and feel of a surname such that the primary
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`significance of the mark is that of a surname.
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`The fourth and final factor relevant to this analysis therefore weighs in favor of the
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`Applicant—appellant.
`
`13
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`

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`Conclusion
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`For the reasons set forth hereinabove, Applicant-appellant submits that the mark as a
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`whole is not primarily merely a surname and that its significance to the consuming public is not
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`that of a surname. Accordingly, Applicant-appellant's mark is entitled to registration.
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`Even if inappropriately dissected, the formative RUXTON does not have primary
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`significance as a surname as it is clearly an extremely rare surname in the United States.
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`Additionally, the extremely rare surname Ruxton is not associated in any way with the company
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`Ruxton Pharmaceuticals, its founders or its employees. Finally, RUXTON has recognized
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`meaning other than as a surname and does not have the look and feel of a surname.
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`Applicant-appellant therefore respectfully requests the Board to reverse the Examining
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`Attorney's decision refusing registration of Applicant—appellant's mark and to remand the
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`application to the Examining Attorney with instructions to approve the mark for publication.
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`Respectfully submitted,
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`DUANE MORRIS LLP
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`Date:
`
`July 14, 2006
`
`DUANE MORRIS LLP
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`30 South Seventeenth Street
`
`Philadelphia, Pennsylvania 19103
`215.979.1000
`
`14
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`TABLE OF EXHIBITS
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`EXHIBIT 1 —
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`Copies of pages from surnam