IP Law Daily, TRADEMARK—TTAB: REIFEL mark not registrable as primarily merely a surname, (Jan 23, 2023)

By Patricia K. Ruiz, J.D.

Exclusive rights in a surname cannot be established without evidence of long and exclusive use, which changes the name’s significance to the public from a surname of an individual to a mark for particular goods and services.

The Trademark Trial and Appeal Board (Board) affirmed the examining attorney’s refusal to register the mark REIFEL due to the mark being primarily merely a surname. The Board found evidence demonstrating that REIFEL is the surname of someone associated with the applicant, is an actual surname to which the public has had a reasonable degree of exposure and has no other recognized ordinary language meaning. Thus, the Board found the mark to be unregistrable because the “primary significance of the mark as a whole to the purchasing public” is that of a surname ( In re Alberta Distillers Ltd., January 4, 2023, Lynch, C.).

Application. Alberta Distillers Limited (applicant) sought to register on the Principal Register the mark REIFEL in standard characters for “Alcoholic beverages, except beer; distilled spirits,” in International Class 33. The examining attorney refused registration under Section 2(e)(4) of the Trademark Act, reasoning that the applied-for mark is primarily merely a surname. Once final, the applicant requested reconsideration of the refusal, which the examining attorney denied. The applicant appealed.

Analysis of surname. Section 2(e)(4) provides that, absent a showing of acquired distinctiveness, registration on the Principal Register must be refused if the proposed mark is “primarily merely a surname.” Exclusive rights in a surname cannot be established without evidence of long and exclusive use, which changes the name’s significance to the public from a surname of an individual to a mark for particular goods and services. A term is deemed primarily merely a surname if, when viewed in relation to the goods or services for which registration is sought, its primary significance as a whole to the purchasing public is that of a surname—a question of fact that must be resolved on a case-by-case basis, considering the record as a whole and factors such as: whether the term is the surname of anyone connected with the applicant; whether the term has a non-surname, ordinary language meaning; the extent of public exposure to the term as a surname; and whether the term has the structure and pronunciation of a surname.

Surname associated with applicant’s goods. The examining attorney pointed to the applicant’s statement that the proposed mark is the surname of the late George Reifel, an individual who is connected with the applicant, and introduced evidence that the applicant owns a pending application to register the full personal name GEORGE REIFEL, as well as a product label touting REIFEL RYE’s namesake. The examining attorney also submitted an online article about the applicant stating the applicant is the first and oldest distiller in the province of Calgary and highlighting the family’s legacy in Vancouver. The Board found that the label submitted to evidence and the applicant’s pending application for the full personal name suggest the applicant publicizes or will publicize George Reifel as the “namesake” of its whisky and held that the record relating to the inquiry weighs in favor of surname significance.

Public exposure to mark as a surname. The examining attorney introduced evidence of public exposure to REIFEL as a surname, which the Board found sufficiently probative to establish that the purchasing public had been exposed to the surname REIFEL, at least to some degree. Despite the applicant’s arguments that Reifel is not an especially common surname, the Board found the record suffices to show meaningful public exposure to the surname, noting that even a rare surname is unregistrable if its primary significance to purchasers is a surname.

No recognized meaning other than as a surname. The examining attorney introduced search results showing no recognized meaning for “reifel” as a word in the English language. The Board found that, in view of the evidence of public exposure to the surname, the negative dictionary evidence is convincing that consumers would perceive REIFEL as a surname and not attribute any alternate meaning to the term.

The Case is Serial No. 90199494.

Attorneys: Natalie Kenealy for the USPTO. Michael D. Adams (Mayer Brown LLP) for Alberta Distillers Ltd.

Companies: Alberta Distillers Ltd.

Cases: Trademark USPTO