IP Law Daily, TRADEMARK—TTAB: THE HARRIMAN HOTEL mark denied registration as surname, (Mar 27, 2023)

By Kevin M. Finson, J.D.

The proposed mark THE HARRIMAN HOTEL was denied registration because the public would primarily perceive it as a surname.

A hotel company would not be allowed to register the mark THE HARRIMAN HOTEL without a showing of required distinctiveness, the Trademark Trial and Appeal Board has held. The mark would be perceived as primarily a surname because as a name it was not very rare, not primarily associated with a historical figure, and it had the look and sound of a surname (In re: Harriman Hotel, LLC, March 22, 2023, Zervas, A.).

Harriman Hotel, LLC (Harriman) sought registration on the Principal Register for the standard character mark THE HARRIMAN HOTEL, with HOTEL disclaimed, for use with real estate services in International Class 36, hotel services in International Class 43, and health spa services in International Class 44. The Examining Attorney refused registration on the ground that the proposed mark would be perceived primarily as a surname. Harriman appealed. The board considered the Benthin factors.

Extent encountered as a surname. Harriman argued that the name Harriman was a rare surname and would therefore not be perceived by the public as merely a surname. The board held, however, that prior cases which had found a mark patentable because it was a rare name were those in which the name appeared a handful of times up to a few dozen times in records such as census data, and in the present case the Examining Attorney had presented evidence from a surname database on Lexis.com showing more than eight thousand of people with the name. Harriman also argued that several other THE [NAME] HOTEL marks had been registered, but the board pointed out that nearly all of Harriman’s examples could be interpreted as given names or had other meanings, and further that the board was not bound by the decisions of earlier Examining Attorneys. The board also noted that Harriman’s own website referred prominently to W. Averell Harriman, a historically prominent politician in the area where Harriman’s business was located, which would also lead consumers to associate the proposed mark with a surname. This factor weighed against registrability.

Names of those connected with the applicant. No evidence was presented on whether anyone associated with Harriman actually had that surname. This factor was neutral.

Uses other than a surname. Harriman argued that the public would understand the word Harriman to have several connotations besides being a surname, such as geographic and historical meaning, primarily centered around the person of William Averell Harriman, a historical politician and businessman. The board found there was insufficient evidence to find that the public in general would associate the name with the historical Harriman, and noted prior case law which had found names such as Pickett and McKinley would be perceived as primarily merely surnames despite their belonging to a famous Civil War general and a deceased President of the United States.

Structure and pronunciation. Harriman argued that the suffix “-man” made it unlikely the mark would be perceived as a surname, pointing out its use with words such as repair, patrol, and signal. The Examining Attorney pointed out, citing the website ancestry.com, the plethora of names ending in -man or -er which historically have indicated occupations, such as Chapman, Bowman, Dauber, or Turner. The board held that this factor weighed against registrability.

Balancing the factors, the board affirmed the refusal to register.

The Case is Serial No. 90096825.

Attorneys: Vivian Micznik First for the USPTO. Marcy L. Sperry (Sperry IP Law LLC d\b\a Vivid IP) for Harriman Hotel, LLC.

Companies: Harriman Hotel, LLC

Cases: Trademark USPTO