Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA489721
`ESTTA Tracking number:
`08/17/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85246288
`American Sports Licensing, Inc.
`KÃ#PPEN
`MARK R GALIS
`GREENBERG TRAURIG LLP
`77 WEST WACKER DRIVE, SUITE 3100
`CHICAGO, IL 60601
`UNITED STATES
`chiipmail@gtlaw.com, galism@gtlaw.com, dunningj@gtlaw.com
`Appeal Brief
`KOPPEN Appeal Brief 8.17.12.pdf ( 22 pages )(228065 bytes )
`Ex A.pdf ( 11 pages )(30212 bytes )
`Ex B.pdf ( 15 pages )(50162 bytes )
`Ex C.pdf ( 13 pages )(42064 bytes )
`Ex D.pdf ( 8 pages )(42002 bytes )
`Ex E.pdf ( 13 pages )(49298 bytes )
`Ex F.pdf ( 12 pages )(31453 bytes )
`Ex G.pdf ( 32 pages )(83197 bytes )
`Jeffrey P. Dunning
`chiipmail@gtlaw.com, matthewsk@gtlaw.com, dunningj@gtlaw.com,
`galism@gtlaw.com
`/Jeffrey P. Dunning/
`08/17/2012
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`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
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`Submission
`Attachments
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`Filer's Name
`Filer's e-mail
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`Signature
`Date
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Application of American Sports Licensing, Inc.
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`Serial Nos. 85/246,260 and 85/246,288 (consolidated for appeal)
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`Filed: February 28, 2011
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`Mark: KÖPPEN
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`APPLICANT’S BRIEF ON APPEAL
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`Jeffrey P. Dunning
`Mark R. Galis
`GREENBERG TRAURIG, LLP
`77 West Wacker Drive, Suite 3100
`Chicago, IL 60601
`(312) 456-8400
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`COUNSEL FOR APPLICANT
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`TABLE OF CONTENTS
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`I.
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`THE RECORD ON APPEAL..............................................................................................2
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`A.
`B.
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`The Surname Refusal...............................................................................................3
`Acquired Distinctiveness .........................................................................................5
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`II.
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`KÖPPEN IS NOT PRIMARILY MERELY A SURNAME ...............................................5
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`A.
`B.
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`Relevant Legal Standards ........................................................................................6
`The Examining Attorney Has Failed to Make a Prima Facie Showing That
`“Köppen” is Primarily Merely a Surname ...............................................................7
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`1.
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`2.
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`3.
`4.
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`There is No Evidence That “Köppen” is a Surname, and “Koppen”
`is an Extremely Rare Surname.....................................................................7
`No one connected with Applicant has the surname “Köppen” or
`“Koppen” ...................................................................................................11
`“Koppen” has a recognized meaning in several languages .......................11
`KÖPPEN does not have the “look or feel” of a surname ..........................12
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`C.
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`Even If the Examining Attorney Made a Prima Facie Showing of
`Surname Significance, Applicant’s Evidence is Sufficient to Rebut Such a
`Showing .................................................................................................................14
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`III.
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`ALTERNATIVELY, KÖPPEN HAS ACQUIRED DISTINCTIVENESS FOR
`GOODS IN CLASS 25 THROUGH EXTENSIVE USE AND PROMOTION................15
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`IV.
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`CONCLUSION..................................................................................................................18
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`i
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`Federal Cases
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`INDEX OF CITED CASES
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`Ex parte Gemex Co.,
`111 USPQ 443 (Comm’r Pat. 1956) ....................................................................................... 14
`In re Aeromet Technologies, Inc.,
`Ser. No. 76/237,453 (TTAB Sep. 25, 2003) ....................................................................... 8, 13
`In re BDH Two Inc.,
`26 USPQ2d 1556 (TTAB 1993) ............................................................................................. 10
`In re Benthin Management GmbH,
`37 USPQ2d 1332 (TTAB 1995) ........................................................................................... 6, 9
`In re Cardano Risk Management B.V.,
`Ser. No. 85/230,910 (TTAB June 7, 2012)............................................................................. 12
`In re Garan Inc.,
`3 USPQ2d 1537 (TTAB 1987) ................................................................................................. 7
`In re Hans Merensky Holdings (Pty) Ltd.,
`Ser. No. 76/528,639 (TTAB June 28, 2005)........................................................................... 12
`In re Isabella Fiore LLC,
`75 USPQ2d 1564 (TTAB 2005) ................................................................................. 11, 14, 15
`In re Joint-Stock Co. “Baik”,
`84 USPQ2d 1921 (TTAB 2007) ..................................................................... 6, 7, 9, 10, 12, 13
`In re Mine Safety Appliances Co.,
`66 USPQ2d 1694 (TTAB 2002) ............................................................................................. 17
`In re Nett Designs Inc.,
`236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) ................................................................ 11
`In re Ruxton Pharmaceuticals, Inc.,
`Ser. No. 78/496,761 (TTAB Oct. 31, 2006) ........................................................................... 11
`In re Sava Research Corp.,
`32 USPQ2d 1381 (TTAB 1994) ................................................................................... 9, 10, 11
`In re Schwan’s IP LLC,
`Ser. No. 78/527,306 (TTAB Apr. 25, 2007)........................................................................... 10
`In re Softspikes, Inc.,
`Ser. No. 75/574,825 (TTAB Mar. 19, 2012) .......................................................................... 17
`In re Spumador S.P.A.,
`Ser. No. 79/056,027 (TTAB Mar. 11, 2010) .......................................................................... 12
`In re Steelbuilding.com,
`415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005) ................................................................ 15
`In re Thomas Nelson, Inc.,
`97 USPQ2d 1712 (TTAB 2011) ............................................................................................. 15
`In re United Distillers plc,
`56 USPQ2d 1220 (TTAB 2000) ........................................................................................... 6, 9
`In re Yeley,
`85 USPQ2d 1150 (TTAB 2007) ............................................................................................... 9
`Jules Berman & Assocs., Inc. v. Consol. Distilled Prods., Inc.,
`202 USPQ 67 (TTAB 1979) ................................................................................................... 13
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`ii
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`L.A. Gear Inc. v. Thom McAn Shoe Co.,
`988 F.2d 1117, 25 USPQ2d 1913 (Fed. Cir. 1993) .......................................................... 16, 17
`Olay Co. v. Avon Prods., Inc.,
`178 USPQ 502 (TTAB 1973) ................................................................................................... 8
`Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd.,
`840 F.2d 1572, 6 USPQ 1001 (Fed. Cir. 1988) ...................................................................... 15
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`Federal Statutes
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`15 U.S.C. § 1052(e)(4).................................................................................................... 1, 6, 15, 18
`15 U.S.C. § 1052(f)................................................................................................... 1, 6, 15, 16, 18
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`Treatises
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`J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §15:56 ...............................16
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`iii
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`Applicant has filed two applications for the trademark KÖPPEN which are presently
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`before the Board: (i) Ser. No. 85/246,288 in Class 25, based on use of the mark in commerce
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`under Trademark Act § 1(a),1 and (ii) Ser. No. 85/246,260 in Classes 11, 18, 20, 22 and 25,
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`based on Applicant’s bona fide intent to use the mark in commerce under Trademark Act § 1(b).2
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`The Examining Attorney has refused registration of both the ‘288 and ‘260 Applications under
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`Trademark Act § 2(e)(4), 15 U.S.C. § 1052(e)(4), on the basis that the KÖPPEN mark is
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`purportedly primarily merely a surname. Further, while Applicant has argued in the alternative
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`that its KÖPPEN mark has acquired distinctiveness under Trademark Act § 2(f), 15 U.S.C. §
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`1052(f), for the Class 25 goods listed in the ‘288 Application, the Examining Attorney has found
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`Applicant’s evidence insufficient to prove acquired distinctiveness. Applicant filed a timely
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`notice of appeal in both applications, and on August 1, 2012, the Board issued an order
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`consolidating the appeals in the ‘288 and ‘260 Applications for purposes of briefing and
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`decision.
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`1 Ser. No. 85/246,288 (hereinafter the “’288 Application”) covers “men's and women's clothing, namely,
`men's tops, women's tops, men's shirts, women's shirts, men's tee shirts, women's tee shirts, men's pants,
`women's pants, men's shorts, women's skirts; men's and women's outdoor clothing, namely, men's jackets
`and women's jackets; men's and women's outerwear, namely, men's rainwear, women's rainwear, men's
`outerwear jackets, women's outerwear jackets, men's outerwear vests, women's outerwear vests” in Class
`25, and lists a date of first use of the mark in commerce of January 6, 2011.
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` 2
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` Ser. No. 85/246,260 (hereinafter the “’260 Application”) covers “lighting apparatus, namely, flashlights;
`outdoor portable lighting products, namely, headlamps; outdoor lighting products, namely, headlamps;
`camping and outdoor gear, namely, gas and wood burning cook stoves and pack stoves” in Class 11;
`“umbrellas; backpacks; day packs; frames for backpacks, hydration packs, namely, backpack hydration
`systems consisting of a backpack, a reservoir, and a mouthpiece connected to the reservoir by a tube, and
`stuff sacks” in Class 18; “outdoor gear and equipment, namely, kayaks, kayak paddles, and related
`paddling accessories, namely, dry bags, paddle leashes, replacement seats, and kayak and seat covers;
`sleeping bags; sleeping bag ground pads” in Class 20; “tents” in Class 22; and “clothing, namely, shorts;
`children's rainwear; footwear; headgear, namely, men's ear warmers, women's ear warmers, men's hats,
`women's hats; socks; gloves; hats; trail shoes” in Class 25.
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`1
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`The Examining Attorney’s refusal to register Applicant’s KÖPPEN mark under § 2(e)(4)
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`is in error and should be reversed for the following reasons, which are discussed in more detail
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`below:
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`• The Examining Attorney has not made a prima facie showing that KÖPPEN is
`primarily merely a surname, as there is no evidence in the record showing use of
`“Köppen” as a surname, and while the Examining Attorney relies solely on evidence
`of surname use of the different term “Koppen”, the record shows that to be an
`extremely rare surname which lacks the “look and feel” of a surname;
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`• Even if the Examining Attorney had made a prima facie showing that “Köppen” has
`surname significance, Applicant has successfully rebutted that showing by submitting
`evidence showing that “Koppen” has a number of recognized non-surname meanings;
`and
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`• Any doubts as to whether a mark is primarily merely a surname must be resolved in
`Applicant’s favor.
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`Further, Applicant has demonstrated that, in the alternative, the KÖPPEN mark has acquired
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`distinctiveness for the Class 25 goods listed in the ‘288 Application, through Applicant’s
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`extensive use and promotion of the KÖPPEN mark for those goods, which have caused the
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`consuming public to regard the KÖPPEN mark as an identifier of source for apparel products.
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`For these reasons, which are discussed in further detail below, the Trademark Trial and
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`Appeal Board (“TTAB” or “Board”) should reverse the Examining Attorney’s erroneous refusal
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`to register Applicant’s KÖPPEN mark in the ‘288 and ‘260 Applications.
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`I.
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`THE RECORD ON APPEAL
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`The record on appeal consists of the evidence listed below.3
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`3 Applicant notes that in both the ‘260 and ‘288 Applications the Examining Attorney and Applicant have
`relied on the same evidence relating to the surname refusals. Applicant’s evidence relating to the issue of
`acquired distinctiveness applies only to the ‘288 Application.
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`2
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`A.
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`The Surname Refusal
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`On March 21, 2011, the Examining Attorney issued office actions in the ‘260 and ‘288
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`Applications, refusing registration under § 2(e)(4). The only evidence cited in support of the §
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`2(e)(4) refusals consisted of a single printout of phone directory listings described as “evidence
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`from PHONEDISC show[ing] the applied-for mark appearing 214 times as a surname in a
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`nationwide telephone directory of names” (3/21/11 Office Action, p. 2). That evidence appears
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`on its face to be a printout dated March 17, 2011 from the LexisNexis “Public Records”
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`database, showing the results of a search conducted by the Examining Attorney for individuals
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`having the surname “Koppen”. While the printout indicates that the search returned a total of
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`214 hits, it only lists the first 100 of those hits.4 Notably, not a single one of those listings
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`identifies any individuals with the surname “Köppen”.
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`On September 21, 2011, Applicant filed responses in both the ‘260 and ‘288
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`Applications, which included the following evidence submitted in response to the § 2(e)(4)
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`refusals:5 (A) entries from “Wiktionary, the free dictionary,” showing the meaning of the term
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`“koppen” in the Danish, Dutch, Norwegian and Swedish languages; (B) Internet evidence
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`showing uses of “Koppen” in several geographical place names in the U.S. and abroad; (C) a
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`Wikipedia entry for “Koppen”, describing “Koppen” as a behavioral disorder in horses; (D) a
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`Wikipedia entry for “Pied Piper of Hamelin”, including a reference to “Köppen Hill” as a
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`location associated with the “Pied Piper” legend; (E) results from Applicant’s Google search for
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`4 Although the Examining Attorney did not properly make of record all of the results from the LexisNexis
`search, Applicant does not dispute the fact that the search identified 214 phone listings for individuals
`with the surname “Koppen”. As discussed further below, whether the search identified only 100 listings
`or 214 listings is a meaningless distinction, as in either case “Koppen” is an extremely rare surname (and
`“Köppen” is a non-existent surname).
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` The evidence submitted with Applicant’s September 21, 2011 response is referred to below by the
`notation “Sep. 21, 2011 Response, Ex. __”.
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`3
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`the terms “koppen” and “pied piper”; and (F) evidence from www.namestatistics.com stating that
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`“KOPPEN is the #37629 most common last name” and “0.0005% of last names in the US are
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`KOPPEN.”
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`On October 31, 2011, the Examining Attorney issued final office actions in the 260 and
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`‘288 Applications, maintaining the § 2(e)(4) refusal in both applications, and including
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`additional
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`evidence
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`in
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`the
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`form
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`of
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`(i)
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`Internet
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`evidence
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`from Applicant’s
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`www.koppenoutdoor.com website; (ii) a Wikipedia entry for “Köppen climate classification”;
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`and (iii) Internet evidence from various third-party websites referencing individuals named
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`Jennifer Koppen, Kristin Koppen, Marcus Koppen, Niek Koppen, and Ida Koppen.
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`Applicant filed timely requests for reconsideration in the ‘260 and ‘288 Applications on
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`April 30, 2012, which included the following additional evidence:6 (A) an excerpt from A
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`Dictionary of Surnames, showing no entries for “Koppen” or “Köppen”; (B) Internet evidence
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`showing that Marcus Koppen is a Dutch photographer; (C) Internet evidence showing that Niek
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`Koppen is a Dutch film director; (D) a Wikipedia entry for “Häagen-Dazs”; (E) a Wikipedia
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`entry for “Rykä”; and (F) a Wikipedia entry for “Metal umlaut”. Applicant also filed a
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`supplemental Request for Reconsideration in both applications on May 1, 2012, including
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`additional evidence in the form of an excerpt from the Encyclopedia of American Family Names,
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`again showing no entries for “Koppen” or “Köppen”.7
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`On June 15, 2012, the Examining Attorney issued a denial of Applicant’s request for
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`reconsideration in both the ‘260 and ‘288 Applications, which included additional evidence in
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`the form of (i) Internet evidence from third-party websites referencing individuals named Dan
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`6 The evidence submitted with Applicant’s April 30, 2012 Request for Reconsideration is referred to
`below by the notation “Apr. 30, 2012 Req. for Recon., Ex. __”.
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` 7
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` The evidence submitted with Applicant’s May 1, 2012 Supplemental Request for Reconsideration is
`referred to below by the notation “May 1, 2012 Supp. Req. for Recon.”
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`4
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`Koppen and Scott Van Koppen; (ii) Internet evidence from Applicant’s website at
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`www.koppenoutdoors.com; and (iii) status information for third-party trademark registrations for
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`the marks KOPPEN and KOPPEN GROUP.
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`B.
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`Acquired Distinctiveness
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`Applicant’s April 30, 2012 Request for Reconsideration in the ‘288 Application included
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`a Declaration from Mary Tortorice, Vice President and Senior Corporate Counsel of Applicant’s
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`parent company Dick’s Sporting Goods, Inc. (“DSG”),8 attesting to the following facts regarding
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`Applicant’s use of the KÖPPEN mark for apparel products in Class 25:
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`• Apparel products being the KÖPPEN trademark are widely sold through over 450
`Dick’s Sporting Goods stores in the United States, and online through the websites
`www.dickssportinggoods.com and www.koppenoutdoor.com;
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`• From January 2011 through April 2012, the sale of apparel products bearing the
`KÖPPEN mark in the United States by DSG and its affiliated companies generated
`revenues in excess of $32 million;
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`• As of April 2012, DSG and its affiliated companies had spent in excess of $1 million
`on the advertising and promotion of apparel products sold under the KÖPPEN mark
`through a variety of channels, including national television advertisements, magazine
`and newspaper advertisements, online display and search advertising, direct consumer
`advertising via direct mail, website advertising, displays at consumer trade shows,
`and in-store signage and advertising;
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`• Apparel products sold under the KÖPPEN trademark have garnered positive editorial
`coverage from numerous industry sources, including well-known publications such as
`Outside Magazine and websites such as GearJunkie.
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`II.
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`KÖPPEN IS NOT PRIMARILY MERELY A SURNAME
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`As discussed further below, the Examining Attorney has failed to make a prima facie
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`showing that Applicant’s KÖPPEN mark would be understood by consumers as primarily merely
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` 8
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` As noted in the Tortorice Declaration, Applicant is a wholly-owned subsidiary of DSG and serves as a
`holding company for intellectual property used by DSG and its affiliated companies in association with
`their business activities, and DSG controls the activities of Applicant, including the selection, adoption,
`registration and use of trademarks (Apr. 30, 2012 Req. for Recon., Ex. G, ¶2).
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`5
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`a surname. The record does not show any use of “Köppen” as a surname in the U.S. Moreover,
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`while the Examining Attorney relies solely on evidence showing surname use of the term
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`“Koppen”, the record shows that “Koppen” is an extremely rare surname in the U.S., has
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`recognized meanings in several other languages, and does not have the “look and feel” of a
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`surname. Moreover, even if the Examining Attorney were found to have made the required
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`prima facie showing of surname significance, the evidence introduced by Applicant is sufficient
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`to rebut any such showing.
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`A.
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`Relevant Legal Standards
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`Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4), precludes registration of a
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`mark which is “primarily merely a surname” on the Principal Register without a showing of
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`acquired distinctiveness under § 2(f) of the Act, 15 U.S.C. § 1052(f). In re Joint-Stock Co.
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`“Baik”, 84 USPQ2d 1921, 1922 (TTAB 2007). The examining attorney bears the initial burden
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`of making a prima facie showing of surname significance. Id. at 1922. If the examining attorney
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`meets that burden, the Board must weigh all of the evidence from the examining attorney and the
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`applicant to determine ultimately whether the mark is primarily merely a surname. Id. If there is
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`any doubt, the Board must resolve the doubt in favor of the applicant. Id. (citing In re Benthin
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`Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995)).
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`The Board has identified a number of factors which should be considered in determining
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`whether a mark is primarily merely a surname, including (i) whether the surname is rare; (ii)
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`whether anyone connected with applicant has the involved term as a surname; (iii) whether the
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`term has any other recognized meaning; and (iv) whether the term has the “look and feel” of a
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`surname. In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000). Whether a mark is
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`primarily merely a surname within the meaning of § 2(e)(4) is a question of fact and must be
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`resolved on a case by case basis. In re United Distillers plc, 56 USPQ2d at 1221. The fact that a
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`6
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`mark may not have other meanings in the English language will not support the refusal to
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`register a mark as “primarily merely a surname” unless the average member of the purchasing
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`public would, upon seeing it used as a trademark, recognize it as a surname. In re Garan Inc., 3
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`USPQ2d 1537, 1539 (TTAB 1987).
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`Further, the fact that a surname is extremely rare weighs heavily in the § 2(e)(4) analysis
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`given the purpose of that statutory provision. As explained by Judge Seeherman in her
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`concurrence in In re Joint-Stock Co. “Baik”, the “purpose behind prohibiting the registration of
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`marks that are primarily merely surnames is not to protect the public from exposure to surnames.
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`. . Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish
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`to use their own surnames in their businesses.” 84 USPQ2d at 1924. In cases involving a very
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`rare surname, the Board “cannot assume that the purchasing public will view the mark as a
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`surname based on exposure to the surname use.” Id. at 1923-24.
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`B.
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`The Examining Attorney Has Failed to Make a Prima Facie Showing That
`“Köppen” is Primarily Merely a Surname
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`While the Examining Attorney has based the § 2(e)(4) refusal solely on a handful of
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`telephone directory listings and websites showing surname use of “Koppen”, she ignores the fact
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`that Applicant’s mark is not KOPPEN – it is KÖPPEN. The Examining Attorney has not
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`provided any evidence showing that anyone in the United States has the surname “Köppen”, or
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`that consumers would perceive “Köppen” as primarily a surname. As such, the Examining
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`Attorney has failed to make a prima facie showing that KÖPPEN is primarily merely a surname.
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`1.
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`There is No Evidence That “Köppen” is a Surname, and “Koppen” is an
`Extremely Rare Surname
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`Based on the record in this case, KÖPPEN is not merely a rare surname in the United
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`States – it is a nonexistent one. The Examining Attorney has failed to identify even a single
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`individual in the U.S. with the surname “Köppen”. Thus, the Board’s inquiry into whether the
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`7
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`Examining Attorney has made a prima facie showing of surname significance can and should
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`end there.
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`The Examining Attorney relies solely on evidence showing surname use of “Koppen”,
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`presupposing that consumers would perceive Applicant’s KÖPPEN mark to be indistinguishable
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`from the term KOPPEN. However, the Examining Attorney provides no evidence or authority to
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`support that proposition, which is contrary to precedent. Rather, the presence of an umlaut over
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`the letter “O” in Applicant’s KÖPPEN mark is a significant distinction, which cannot be
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`disregarded as the Examining Attorney has done. See In re Aeromet Technologies, Inc., Ser. No.
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`76/237,453, at p. 8 (TTAB Sep. 25, 2003)9 (noting that “Applicant has applied to register the
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`mark GLASSÕN and not simply GLASSON [and there] is no evidence that the applied-for term
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`GLASSÕN is a surname”); Olay Co. v. Avon Prods., Inc. 178 USPQ 502 (TTAB 1973)
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`(ÖLAND not likely to be confused with OLAY because ÖLAND contains an umlaut).
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`However, even if the Board accepts the Examining Attorney’s proposition that KOPPEN
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`and KÖPPEN are equivalent for purposes of the § 2(e)(4) analysis, the record shows that
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`“Koppen” is a very rare surname in the United States. The Examining Attorney has relied on the
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`results of a search which identified only 214 listings for the surname “Koppen” in a nationwide
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`search. Even assuming that those 214 listings represent 214 separate individuals, individuals
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`with the “Koppen” surname would only represent .00007% (less than one ten-thousandth of one
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`percent) of the U.S. population. Put another way, less than one in a million people in the U.S.
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`have the surname Koppen.
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`As the Board has noted, in cases involving a very rare surname, the Board cannot assume
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`that the purchasing public will view the mark as a surname based on exposure to the surname
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`9 A copy of this non-published Board opinion is attached to this brief as Ex. A for the Board’s
`convenience.
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`8
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`use. In re Joint-Stock Co. “Baik”, 84 USPQ2d at 1923-24. As such, the record in this case
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`cannot establish that the relevant purchasing public would primarily identify KÖPPEN as a
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`surname. See In re Yeley, 85 USPQ2d 1150, 1152 (TTAB 2007) (finding YELEY to be a rare
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`surname where 147 listings for “Yeley” were found in a nationwide LexisNexis phone
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`directory); In re Joint-Stock Co. “Baik”, 84 USPQ2d at 1922-23 (finding BAIK to be “an
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`extremely rare surname” where “only 456 examples of the Baik surname were located from a
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`comprehensive directory of the entire United States”); In re United Distillers, 56 USPQ2d at
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`1221 (finding HACKLER to be a rare surname notwithstanding 1,295 listings for that name in
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`the PhoneDisc database); In re Benthin Management, 37 USPQ2d at 1333 (finding BENTHIN to
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`be a rare surname where a PhoneDisc search identified approximately 100 “Benthin” listings); In
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`re Sava Research Corp., 32 USPQ2d 1381 (TTAB 1994) (finding SAVA to be a rare surname
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`where a PhoneDisc search showed “at least 100 different SAVAs liv[ing] throughout the United
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`States”).
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`In addition, Applicant has made of record excerpts from the Dictionary of Surnames10
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`and Encyclopedia of American Family Names,11 showing that neither “Köppen” nor “Koppen” is
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`listed in those references as a recognized surname. The Board has found that such evidence
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`further weighs against a finding that a mark is primarily merely a surname. See In re Benthin
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`Management GmbH, 37 USPQ2d at 1333; In re Sava Research Corp., 32 USPQ2d at 1381.
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`While the Examining Attorney also relies on a handful of third-party websites which
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`purport to show use of “Koppen” as a surname, most of those printouts relate to individuals who
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`reside outside of the U.S. For example, Marcus Koppen is a photographer who resides in the
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`10 Apr. 30, 2012 Req. for Recon., Ex. A.
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`11 May 1, 2012 Supp. Req. for Recon.
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`9
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`Netherlands;12 Niek Koppen is a film director based in the Netherlands;13 and Ida Koppen is a
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`“registered civil mediator in the Canton of Geneva” in Switzerland.14 Such evidence has no
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`relevance to the issue of whether consumers in the United States would perceive Applicant’s
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`KÖPPEN mark as primarily merely a surname. See In re BDH Two Inc. 26 USPQ2d 1556, 1558
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`(TTAB 1993) (noting that “it is the surname significance of the term in the United States which
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`is determinative,” and finding NEXIS listings from foreign publications to have limited
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`persuasive impact); In re Schwan’s IP LLC, Ser. No. 78/527,306, at p. 4 (TTAB Apr. 25, 2007)15
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`(web pages from foreign websites found to have no probative value in determining how U.S.
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`consumers would perceive the mark). The remaining handful of third party websites identified
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`by the Examining Attorney which purport to show use of “Koppen” as a surname are akin to
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`telephone directory listings and likewise have little evidentiary value. See In re Joint-Stock Co.
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`“Baik”, 84 USPQ2d at 1922-23 (Internet and LEXIS/NEXIS evidence showing a handful of
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`surname uses of “Baik” did not support a finding that the number of individuals with that
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`surname was any higher than suggested by telephone directory evidence); In re Sava Research
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`Corp., 32 USPQ2d at 1381 (search of the NEXIS database that identified only one individual
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`with the surname “Sava” weighs against finding that the mark was primarily merely a surname).
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`Similarly, while the Examining Attorney has identified two registrations on the
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`Supplemental Register for the marks KOPPEN and KOPPEN GROUP (both owned by the same
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`entity) as evidence supporting the § 2(e)(4) refusal, it is well-settled that the Board must decide
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`12 Apr. 30, 2012 Req. for Recon., Ex. B.
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`13 Apr. 30, 2012 Req. for Recon., Ex. C.
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`14 Oct. 31, 2011 Office Action.
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`15 A copy of this non-published Board opinion is attached to this brief as Ex. B for the Board’s
`convenience.
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`10
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`each case on its own merits. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
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`(Fed. Cir. 2001) (citation omitted). Thus, the fact that the USPTO may have disallowed
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`registration of the mark KOPPEN (a different mark than the one presently before the Board) on
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`the Principal Register to another applicant based on a different factual record does not bind the
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`Board in this case. Id. See also In re Ruxton Pharmaceuticals, Inc., Ser. No. 78/496,761, at p. 7
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`n.4 (TTAB Oct. 31, 2006) (noting that two third-party registrations identified by the Examining
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`Attorney which issued under Section 2(f) were “not sufficient to establish a particular practice by
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`the [USPTO]”).16
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`2.
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`No one connected with Applicant has the surname “Köppen” or “Koppen”
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`It is undisputed that none of Applicant’s (or its parent DSG’s) officers, directors or
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`employees have the surname KOPPEN or KÖPPEN.17 Thus, this factor likewise weighs against
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`a finding that KÖPPEN is primarily merely a surname. In re Sava Research Corp., 32 USPQ2d
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`at 1381.
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`3.
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`“Koppen” has a recognized meaning in several languages
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`Applicant has made of record evidence showing that the term “koppen” has a recognized
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`meaning in several European languages, including the Danish, Dutch, Norwegian, Swedish and
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`German languages.18 As the Board has noted, the question of whether a term is primarily merely
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`a surname must take into consideration the meaning that term has in a foreign language. In re
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`Isabella Fiore LLC, 75 USPQ2d 1564, 1568 (TTAB 2005). Accordingly, this factor further
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`weighs against a finding that KÖPPEN is primarily merely a surname.
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`16 A copy of this non-published Board opinion is attached to this brief as Ex. C for the Board’s
`convenience.
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`17 Apr. 30, 2012 Req. for Recon., Ex. G, ¶ 5.
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`18 Sep. 21, 2011 Response, Ex. A and C.
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`11
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`4.
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`KÖPPEN does not have the “look or feel” of a surname
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`The record in this case is devoid of any evidence that would support a finding that
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`KÖPPEN has the “look and feel” of a surname. Indeed, the Examining Attorney has failed to
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`make of record any evidence bearing on this factor, or to explain how or why that mark has the
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`“look and feel” of a surname. In the absence of such evidence, the Board cannot find that
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`Applicant’s KÖPPEN mark has the “look and feel” of a surname. In re Cardano Risk
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`Management B.V., Ser. No. 85/230,910, at pp. 6-7 (TTAB June 7, 2012).19
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`Further, putting aside the lack of any evidence bearing on this factor, Applicant submits
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`that the KÖPPEN mark is likely to be perceived by the purchasing public not as a surname, but
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`rather as a coined or fanciful Germanic-sounding term which serves only to identify the source
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`of Applicant’s apparel products. See, e.g., In re Joint-Stock Co. “Baik”, 84 USPQ2d at 1923
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`(noting that BAIK, while a coined term,