From: Milone, Marcie
`
`Sent: 8/18/2006 1:02:09 PM
`
`To: TTAB EFiling
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`CC:
`
`Subject: TRADEMARK APPLICATION NO. 78496761 - RUXTON
`PHARMACEUTICALS - E2337-00003
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`
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`*************************************************
`Attachment Information:
`Count: 1
`Files: 78496761.doc
`
`
`
`Sent: 8/18/2006 1:02:09 PM
`
`To: TTAB EFiling
`
`CC:
`
`Subject: TRADEMARK APPLICATION NO. 78496761 - RUXTON
`PHARMACEUTICALS - E2337-00003
`
`
`
`*************************************************
`Attachment Information:
`Count: 1
`Files: 78496761.doc
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
` SERIAL NO:
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`78/496761
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`*78496761*
`BEFORE THE
`TRADEMARK TRIAL
`AND APPEAL BOARD
`ON APPEAL
`
`
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`Please provide in all correspondence:
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`1. Filing date, serial number, mark and
` applicant's name.
`2. Date of this Office Action.
`3. Examining Attorney's name and
` Law Office number.
`4. Your telephone number and e-mail
`address.
`
`
`
`
` APPLICANT:
`
`Ruxton Pharmaceuticals, Inc.
`
`
` CORRESPONDENT ADDRESS:
` NICOLE K. MCLAUGHLIN, ESQUIRE
` DUANE MORRIS LLP
` 1 LIBERTY PL
` PHILADELPHIA PA 19103-7301
`
`
`RUXTON PHARMACEUTICALS
`
` MARK:
`
` CORRESPONDENT’S REFERENCE/DOCKET NO: E2337-00003
`
` CORRESPONDENT EMAIL ADDRESS:
` nkmclaughlin@duanemorris.com
`
`EXAMINING ATTORNEY'S APPEAL BRIEF
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`Ruxton Pharmaceuticals, Inc.
`
`RUXTON
`PHARMACEUTICALS
`78496761
`
`NICOLE K. MCLAUGHLIN
`
`DUANE MORRIS LLP
`1 LIBERTY PL
`PHILADELPHIA PA
`19103-7301
`
`:
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`:
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`:
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`:
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`:
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`BEFORE THE
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`TRADEMARK TRIAL
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`AND
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`APPEAL BOARD
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`ON APPEAL
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`
`
`EXAMINING ATTORNEY’S APPEAL BRIEF
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`
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`STATEMENT OF THE CASE
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`Applicant:
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`Trademark:
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`Serial No:
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`Attorney:
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`Address:
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ON APPEAL
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`Applicant has appealed the trademark examining attorney's refusal to register
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`the mark "RUXTON PHARMACEUTICALS" for "pharmaceutical products and
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`preparations for the treatment and prevention of central nervous system diseases,
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`namely, neurodegenerative, cognitive, psychiatric and pain disorders; cardiovascular,
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`anti-inflammatory and anti-infective pharmaceuticals and preparations" in Class 5.
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`Registration was refused under Trademark Act § 2(e)(4), 15 U.S.C. §1052(e)(4),
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`because the proposed mark is primarily merely a surname.
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`FACTS
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`On November 8, 2004, applicant filed the application at issue to register the
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`above mark, alleging a bona fide intention to use the mark in commerce. On May 19,
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`
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`2005, the Examining Attorney refused registration of the mark on the ground that the
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`proposed mark is primarily merely a surname under Section 2(e)(4) of the Trademark
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`Act. In addition, the Examining Attorney required the applicant to amend the
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`identification of goods and provide a disclaimer of PHARMACEUTICALS. On October
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`12, 2005, applicant filed a response in which applicant disclaimed the wording
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`PHARMACEUTICALS and amended the identification of goods, which the examiner
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`accepted. On November 15, 2005, the Section 2(e)(4) refusal was made final. The
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`applicant filed a request for reconsideration on March 16, 2006, which the Examining
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`Attorney denied on May 10, 2006. Applicant filed this appeal on May 15, 2006.
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`ARGUMENT
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`I. APPLICANT’S MARK, “RUXTON PHARMACEUTICALS,” IS PRIMARILY
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`MERELY A SURNAME UNDER TRADEMARK ACT SECTION 2(e)(4).
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`
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`Under Section 2(e)(4) of the Trademark Act, 15 U.S.C. Section 1051(e)(4), a mark
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`which is primarily merely a surname is not registrable on the Principal Register, absent a
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`showing of acquired distinctiveness under Section 2(f), 15 U.S.C. Section 1052(f). Section
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`2(e)(4) of the Trademark Act reflects the common law that exclusive rights in a surname per
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`se cannot be established without evidence of long and exclusive use of the surname, which,
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`therefore, changes the significance of the surname from that of a surname to that of a mark
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`for particular goods or services. In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225
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`USPQ 652, 653 (Fed.Cir. 1985).
`
`The question of whether a term is primarily merely a surname depends on the
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`primary significance to the purchasing public. See, e.g. Ex parte Rivera Watch Corp.,
`
`
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`106 USPQ 145, 149 (Comm’r Pats. 1955); In re Kahan & Weisz Jewelry Mfg. Corp., 508
`
`F.2d 831, 184 USPQ 421 (CCPA 1975). Each case must be decided on its own facts,
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`based upon the evidence in the record. TMEP §1211.01.
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`The burden of proof is initially on the Examining Attorney to establish a prima
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`facie case that a mark is primarily merely a surname. The burden then shifts to Applicant
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`to rebut this showing. In re Petrin Corp., 231 USPQ 902 (TTAB 1986). There is no rule
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`as to the kind or amount of evidence necessary to make out a prima facie showing that a
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`term is primarily merely as surname. The question must be resolved on a case-by-case
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`basis. See, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re
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`Pohang Iron & Steel Co., Ltd., 230 USPQ 79 (TTAB 1986).
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`In
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`this
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`case, Applicant
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`seeks
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`to
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`register
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`the mark RUXTON
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`PHARMACEUTICALS in standard character form. The Examining Attorney submits
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`that the evidence of record establishes a prima facie case that RUXTON is primarily
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`merely a surname. As evidence of the primary meaning of this term to the purchasing
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`public, the Examining Attorney submitted, along with the first Office action, evidence
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`from the Lexis USFIND database comprised of address lists and telephone directories
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`including approximately 117 listings from the United States. This evidence counts only
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`those persons on the list, often only the head of a household, and the actual number of
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`persons with the surname (including spouses, children, and those who remain unlisted) is
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`presumed to be much higher.1 Also attached to the first Office action were two prior
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`trademark registrations for the mark RUXTON, both of which are on the Principal
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`Register under Section 2(f).
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`1 The Examining Attorney later attached 115 listings from the USFIND database, in response to applicant’s
`argument that the number of listings was actually closer to 100.
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`
`
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`In the final Office Action dated November 14, 2005, the Examining Attorney
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`made available electronic evidence from LEXIS-NEXIS showing surname use of the
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`term RUXTON. Further evidence of the surname significance of the mark was produced
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`via an Internet search, which revealed articles showing use of RUXTON: 1) as the
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`surname of an author whose books are found in the United States via Amazon.com; 2) as
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`a surname listed on Ancestry.com; 3) as a surname for genealogy purposes, listed under
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`the title The Prominent Families of the United States; 4) as the surname of an explorer
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`whose name was used for a trading post in Colorado; 5) as a surname via Ancestry.com
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`that showed 7,553 matches in that website’s records, which include U.S. immigration
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`results and U.S. Census indices; 6) as the surname of James Ruxton, whose obituary was
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`attached; 7) as a surname for which there is a family crest; and 8) as the surname of a
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`movie actor. The examiner also produced the results of a search in the Columbia
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`Gazetteer, which showed that a geographic search for RUXTON did not produce any
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`results, but a full search at Bartleby.com showed a hit for RUXTON used solely as a
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`surname.2 Finally, further evidence of the surname significance of the mark is
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`Applicant's own admission that the term RUXTON is, in fact, a surname.
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`The following five factors are considered in the determination of whether a mark
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`is primarily merely a surname:
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`(1) whether the surname is rare;
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`(2) whether the term is the surname of anyone connected with the applicant;
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`(3) whether the term has any recognized meaning other than as a surname;
`
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`2 The word RUXTON would have appeared with a definition in this search, if, indeed, it were a defined
`term. The absence of the term in the dictionary supports the finding that the term is primarily merely a
`surname. TMEP § 1211.02(b)(v).
`
`
`
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`(4) whether it has the “look and feel” of a surname; and
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`(5) whether the stylization of lettering is distinctive enough to create a separate
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`commercial impression.
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`TMEP §1211.02(b). See In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-
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`1334 (TTAB 1995); In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994) and
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`cases cited therein.
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`With regard to the first Benthin factor, whether the surname is rare, applicant
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`argues against the Examining Attorney’s showing that the term RUXTON is primarily
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`merely a surname by asserting that the proposed mark is a “rare surname.” Applicant
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`argues that the listing of 117 (or, arguendo, 100) entries in the evidence of record
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`demonstrates the rare nature of the RUXTON surname. This is without merit.
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`At the onset, it should be noted that rare surnames may be unregistrable under
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`Trademark Act Section 2(e)(4) if their primary significance to purchasers is that of a
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`surname. See In re Establissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir.
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`1985).
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`Moreover, there is no minimum number of telephone directory listings needed to
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`prove that a mark is primarily merely a surname. See e.g., In re Industrie Pirelli S.p.A., 9
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`USPQ 1564 (TTAB 1988); In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (twenty-four
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`listings of Petrin found sufficient); In re Pohang Iron & Steel Co., 230 USPQ 79 (TTAB
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`1986)(eleven telephone listings and twelve LEXIS references of persons named Posten
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`found sufficient). The Trademark Trial and Appeal Board has declined to hold that a
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`minimum number of listings in telephone directories must be found in order to establish a
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`prima facie showing that the mark is primarily merely a surname. See, e.g., In re Petrin
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`
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`Corp., 231 USPQ 902 (TTAB 1986); In re Wickuler-Kupper-Brauerei KGaA, 221 USPQ
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`469 (TTAB 1983).
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`Additionally, the issue of determining whether a surname is common or rare is not
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`determined solely by comparing the number of listings of the surname in a computerized
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`database with the total number of listings in that database because even the most common
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`surname would represent only a small fraction of such a database. Rather, if a surname
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`appears routinely in news reports, articles and other media as to be broadly exposed to the
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`general public, then such surname is not rare and would be perceived by the public as
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`primarily merely a surname. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).
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`In this context, the “rarity” of the appearance of RUXTON in online directories is
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`mitigated by the manner in which RUXTON routinely appears in news reports, articles
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`and other media. As part of its Response to Office Action, applicant submitted pages
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`from sources that were copyrighted in 1904 and 1969 to show that RUXTON does not
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`exist as a surname in those sources. However, the applicant’s source from 2003 does
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`show that RUXTON is, in fact, a surname. Applicant further attached two pages from
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`whitepages.com to show that there are no individuals named RUXTON in the applicant’s
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`town or zip code. Then, applicant argued that there is no one within its corporation that
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`has RUXTON as a surname. However, applicant’s three sources do not outweigh the
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`examiner’s solid evidence showing that RUXTON does have surname significance. The
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`examiner notes that one of applicant’s directories is more than 100 years old; the other is
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`almost 40 years old. Finally, the Internet search produced by the applicant does not
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`provide evidence on a national scale, as the examiner’s evidence does.
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`
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`In its Request for Reconsideration, applicant contends that several of the results
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`presented by the Examining Attorney are duplicative, seem to relate to the same person,
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`or reference sources outside the United States. Applicant also argues that the number of
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`hits for RUXTON is small in comparison to surnames like Smith or Johnson.
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`Applicant’s summation of the evidence is misguided. The Examining Attorney’s job is
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`not to compare the most common surnames to other less common surnames but instead to
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`show that the primary significance of the wording RUXTON is as a surname.
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`It is clear from the evidence that the relevant purchasing public will readily
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`perceive RUXTON as a surname, because printouts of articles downloaded from the
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`Internet are admissible as evidence of information available to the general public, and
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`evidence of the way in which a term is being used by the public. TMEP §710.01(b). In
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`re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v.
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`Apogee Inc., 47 USPQ2d 1368, 1370-1 (TTAB 1998). Thus, the first Benthin factor
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`weighs heavily toward the examiner’s position that RUXTON is primarily recognized as
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`a surname.
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`Regarding the second Benthin factor, whether the term is the surname of anyone
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`connected with the applicant, applicant stated that no one within its corporation has the
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`surname RUXTON. The fact that a proposed mark is not the surname of an officer or
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`employee, does not tend to establish one way or the other whether the proposed mark
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`would be perceived as a surname. See In re Gregory, 70 USPQ2d 1792, 1795 (TTAB
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`2004).
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`Regarding the third and fourth Benthin factors, whether the term has any
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`recognized meaning other than as a surname and whether it has the “look and feel” of a
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`
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`surname, the examiner’s evidence established that the proposed mark does not have any
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`primary recognition other than that of a surname. If there is a readily recognized
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`meaning of a term, apart from its surname significance, such that the primary significance
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`of the term is not that of a surname, registration should be granted on the Principal
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`Register without evidence of acquired distinctiveness. See Fisher Radio Corp. v. Bird
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`Electronic Corp., 162 USPQ 265 (TTAB 1969) ("BIRD" held not primarily merely a
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`surname despite surname significance); In re Hunt Electronics Co., 155 USPQ 606
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`(TTAB 1967) ("HUNT" held not primarily merely a surname despite surname
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`significance). In fact, this is not the case in this instance. Applicant has neither shown
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`there is a defined meaning of the term RUXTON, nor that any other meaning is the
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`primary significance to the purchasing public. The examiner, however, produced the
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`results of a search from Bartleby.com to show that the primary significance retrieved was
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`that of a surname. Again, if a defined term for RUXTON existed in that database, it
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`would have been retrieved as well. However, no defined term resulted. Negative
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`dictionary evidence (i.e. evidence that a term is absent from dictionaries or atlases) may
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`demonstrate the lack of non-surname significance of a term. See In re Petrin Corp., 231
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`USPQ 902 (TTAB 1986). Based on the Internet evidence, the LEXIS-NEXIS database
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`evidence, and the lack of any other evidence showing an alternative meaning, it is evident
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`that the primary meaning of RUXTON to the purchasing public is that of a surname.
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`Moreover, RUXTON has the “look and feel” of a surname. Applicant argues that
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`the mark is RUXTON PHARMACEUTICALS and that the addition of
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`PHARMACEUTICALS to the mark “minimizes any surname significance of
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`RUXTON.” However, the combining a surname with the generic name for the goods or
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`
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`services does not overcome a mark’s surname significance. See In re Hamilton
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`Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993) (HAMILTON
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`PHARMACEUTICALS held primarily merely a surname for “pharmaceutical
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`products”); In re Cazes, 21 USPQ2d 1796 (TTAB 1991) (BRASSERIE LIPP held
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`primarily merely a surname when used in connection with “restaurant services”); In re
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`Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (WOOLLEY’S PETITE
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`SUITES held primarily merely a surname for hotel and motel services). In the present
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`case, as shown by the evidence, the wording “PHARMACEUTICALS” is generic for
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`pharmaceuticals products and preparations. In support of this contention, the examiner
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`attached dictionary definitions to the first Office action, as well as pointing out that the
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`applicant’s own description of goods included this term. Hence, the addition of the
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`wording PHARMACEUTICALS does not alter the surname significance of the mark
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`because it identifies the generic name for the goods.
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`There is no evidence of record to suggest that the proposed mark will be
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`perceived as anything other than a surname. It does not appear to have a defined,
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`recognized meaning or coined meaning. See In Re Gregory, 70 USPQ2d 1792 (TTAB
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`2004)(ROGAN held primarily merely a surname, the board stating that ROGAN has the
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`look and sound of a surname [and] would not be perceived as an initials or acronym, and
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`does not have the appearance of having been coined by combining a root element that has
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`a readily understood meaning in its own right with either a prefix or a suffix…appears to
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`be a cohesive term with no meaning other than as a surname”). RUXTON appears to be
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`a cohesive term that has nothing more than surname significance. The fact that a term
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`looks and sounds like a surname may contribute to a finding that the primary significance
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`
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`of the term is that of a surname. In re Industrie Pirelli Societa per Azioni, 9 USPQ 902
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`(TTAB 1986)(PIRELLI held primarily merely as surname, the Board stating that “certain
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`rare surnames look like surnames and certain rare surnames do not and…’PIRELLI’ falls
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`into the former category…”); TMEP §1211.01(a)(vi).
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`In the denial of the request for reconsideration, the Examining Attorney attached
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`additional evidence that other, similar sounding surnames, such as BRAXTON,
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`BUXTON, RUX, and ROXTON have a primary significance as a surname. The
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`examiner also attached evidence of a Ruxton tartan that was submitted by a RUXTON
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`from California. This evidence only bolsters the examiner’s argument that the primary
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`significance of RUXTON is as a surname and that RUXTON has the “look and feel” of a
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`surname.
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`Regarding the fifth Benthin factor, Applicant’s mark is a standard character mark
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`that does not feature any distinct stylization or lettering. Accordingly, the mark is not
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`coupled with any distinctive stylization or design element, that would obviate a primarily
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`merely a surname finding. (See In re Benthin Management GmbH, 37 USPQ2d 1332
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`(TTAB 1995) (stylized display of term BENTHIN found to be a factor weighing against a
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`finding that the term would be perceived as primarily merely a surname).
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`Despite applicant’s position to the contrary, the prima facie evidence in this case
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`is substantial and solid that the primary significance of the wording RUXTON is as a
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`surname. RUXTON does not have a defined, recognized meaning that obviates its
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`primary surname significance, it is not a primarily geographic or historical term, it has the
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`look and feel of a surname, and applicant has conceded that RUXTON is a surname. As
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`the evidence of record supports, the proposed mark, RUXTON PHARMACEUTICALS,
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`
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`is primarily merely a surname and the significance of the term to the relevant purchasing
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`public can be nothing more than that of a surname.
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`For the above reasons, the refusal under Section 2(e)(4) should be affirmed.
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`CONCLUSION
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`As shown by
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`the evidence of record,
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`the proposed mark "RUXTON
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`PHARMACEUTICALS" is primarily merely a surname and the inclusion in the mark of
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`the generic name for the goods does not overcome its surname significance. For the
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`foregoing reasons, the trademark examining attorney respectfully requests that the refusal
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`to register applicant's mark under Section 2(e)(4) be affirmed.
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`/Marcie R. Frum Milone/
`Trademark Examining Attorney
`Law Office 116
`571-272-9726
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`
`
`MICHAEL W. BAIRD
`Managing Attorney
`Law Office - 116
`
`Respectfully submitted,
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