The opinion
THIS OPINION
IS A PRECEDENT
OF THE T.T.A.B.
Mailed:
March 15, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Thermo LabSystems Inc.1
________
Serial No. 78204502
_______
Timothy D. Pecsenye and Lisa Casey Spaniel of Blank Rome
LLP for Thermo LabSystems Inc.
Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Michael Baird, Managing Attorney).
_______
Before Hairston, Rogers and Zervas, Administrative
Trademark Judges.
Opinion by Zervas, Administrative Trademark Judge:
Thermo LabSystems Inc. has appealed from the final
refusal of the trademark examining attorney to register
WATSON (in standard character form) as a trademark for
“computer software for use in laboratory information
management, namely, software used in analyzing, reporting,
1
The application was assigned from InnaPhase Group Holdings,
Inc., the original applicant at the time of filing, to Thermo
LabSystems Inc. The assignment was recorded with the USPTO
Assignment Division at Reel 3319, Frame 0948.
Serial No. 78204502
and tracking pharmaceutical drug study sample data for
regulatory compliance”2 in International Class 9.
The examining attorney refused to register applicant's
mark on the ground that the mark is primarily merely a
surname under Section 2(e)(4) of the Trademark Act. 15
U.S.C. § 1052(e)(4). After the examining attorney made the
refusal final and denied applicant's request for
reconsideration, applicant appealed. Both applicant and
the examining attorney have filed briefs.
The only issue in this appeal is whether applicant's
mark is primarily merely a surname. When we are faced with
a Section 2(e)(4) refusal, we consider the impact a term
has or would have on the purchasing public because “it is
that impact or impression which should be evaluated in
determining whether or not the primary significance of a
word when applied to a product is a surname significance.
If it is, and it is only that, then it is primarily merely
a surname.” In re Harris-Intertype Corp., 518 F.2d 629,
186 USPQ 238, 239 (CCPA 1975), quoting, Ex parte Rivera
Watch Corp., 106 USPQ 145 (Comm'r 1955).
2
Application Serial No. 78204502, filed January 17, 2003,
claiming first use anywhere and first use in commerce on November
1, 1995.
2
Serial No. 78204502
We normally look to four factors in a surname
analysis: (i) whether the surname is rare; (ii) whether
anyone connected with applicant has the involved term as a
surname; (iii) whether the term has any other recognized
meaning; and (iv) whether the term has the “look and feel”
of a surname. See In re United Distillers plc, 56 USPQ2d
1220 (TTAB 2000), citing In re Benthin Management Gmbh, 37
USPQ2d 1332 (TTAB 1995).
The examining attorney has the initial burden of
presenting evidence to show prima facie that a mark is
primarily merely a surname. In re Hutchinson Technology
Inc., 852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988); In re
Raivico, 9 USPQ2d 2006 (TTAB 1988).
The examining attorney submitted the following with
her Office actions:
(i) results of a search from the PowerFinder
database showing 81,296 residential listings
for the surname “Watson”;
(ii) various web pages identifying persons with
the surname “Watson,” notably Nobel Prize
winner James D. Watson, who “is best known
for his discovery of the structure of DNA”;
Congresswoman Diane Watson of California;
Thomas J. Watson, Jr., after whom Brown
University’s Watson Institute for
International Studies is named; Mark W.
Watson, Princeton University professor of
economics and public affairs; actress Emma
Watson; and John Watson, Johns Hopkins
University professor of experimental and
comparative psychology;
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Serial No. 78204502
(iii) a webpage from about.com stating that
“Watson” is a surname of English and
Scottish origin;
(iv) another webpage from about.com and webpages
from mongabay.com and behindthename.com
stating that “Watson” ranks as the 72nd most
common surname in the United States;
(v) an entry from rootsweb.com showing “Watson”
as one of “The Most Common Surnames Used
Today”; and
(vi) webpages from mongabay.com and
behindthename.com stating that 283,800
persons and 256,161 persons, respectively,
have “Watson” as a surname in the United
States.
In view of the examining attorney’s evidence, as well
as applicant’s statement at p. 7 of its brief that “the
fact that WATSON is a surname is not disputed,” we find
that the record contains sufficient evidence to establish
prima facie that the primary significance of the mark
WATSON to the purchasing public for applicant's goods is
merely that of a surname.
In regard to the first factor, i.e., whether the
surname is rare, we note that the examining attorney's
evidence shows over 81,000 residential listings and over
250,000 persons with the surname “Watson”; that “Watson” is
the 72nd most common surname in the United States; and that
“Watson” is the surname of several people who have made
significant accomplishments in their professional lives.
4
Serial No. 78204502
We hence find that the examining attorney has shown that
“Watson” is not a rare surname.3
Turning to the second factor, we consider whether
anyone associated with applicant has the surname “Watson.”
Applicant has indicated in its response to the first Office
action that no person associated with applicant has
“Watson” as a surname. The fact, however, that “a proposed
mark is not applicant’s surname, or the surname of an
officer or employee, does not tend to establish one way or
the other whether the proposed mark would be perceived as a
surname.” In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).
The absence of anyone associated with applicant who has the
surname “Watson” is therefore a factor which is neutral.
Third, we consider whether there is any evidence to
indicate that "Watson" has another recognized meaning. In
this case, the examining attorney has not submitted any
evidence of another recognized meaning for "Watson."
(However, as discussed later in this decision, applicant
3
Applicant has argued that “Watson” is a rare surname because
“it is not among the most popular surnames such as Smith or
Jones.” Brief at p. 14. The about.com webpage shows Smith as
the most common surname and Jones as the fourth most common
surname in the United States. Certainly, a surname need not be
among the most common surnames in order not to be a rare surname.
Also, we are not persuaded that “Watson” is not one of the most
common surnames – of all the surnames in the United States,
“Watson” has been ranked as the 72nd most common surname.
5
Serial No. 78204502
maintains “Watson” has significance other than as a mere
surname.)
Fourth, we consider whether the term has the “look and
feel” of a surname. The examining attorney's evidence
supports her argument that "Watson" has the “look and feel”
of a surname. She has shown that there are numerous
individuals with that surname; and that some of such
persons are notable in view of their professional
accomplishments. The resulting public attention
contributes to public perception of "Watson" as a surname.
Gregory, 70 USPQ2d at 1796. In addition, we note that the
term would not be perceived as an acronym, initialism or a
coined term, but instead, as "a cohesive term with no
meaning other than as a surname." Id. Further, the
examining attorney's evidence from about.com shows that
like “Watson,” many surnames end with “son,” including the
name identified as the second most common surname in the
United States, i.e., Johnson. See also Anderson, Jackson,
Thompson, Robinson, Nelson, Richardson, Peterson, Henderson
and Patterson, which, like "Watson," are within the one
hundred most common surnames in the United States.
Applicant has argued that WATSON “lies closer … to
names like HACKLER that do not immediately proclaim their
surname significance than to names like PIRELLI that do,”
6
Serial No. 78204502
in view of the Board’s finding in In re Industrie Pirelli
Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988), aff’d, 883
F.2d 1026 (Fed. Cir. 1989) that PIRELLI was primarily
merely a surname and in United Distillers, 56 USPQ2d at
1222, that HACKLER did not have the look and feel of a
surname. “WATSON does not have a typical surname prefix
(e.g. Mc or Mac) or suffix (e.g. –stein, -elli, -ski, or –
berg) ….” Brief at p. 15. This argument is not persuasive
because a name need not have a “typical surname prefix … or
suffix" to have the look and feel of a surname; and because
“Watson” ends with “son,” which the examining attorney has
established is a typical surname suffix appearing in
several names within the one hundred most common surnames
in the United States.4
Applicant has also argued that it “does not use the
WATSON mark in a way that highlights it[s] surname
significance” but that it “consistently uses its mark,
WATSON, in a way that detracts from the surname
significance of the mark.” Specifically, applicant argues
that it “markets its WATSON software with a suite of
software titles [GALILEO, COPERNICUS, KELVIN, NEWTON and
4
To the extent applicant is contending that its use of “Watson”
evokes the name of a well-known scientist, applicant’s contention
actually supports the conclusion that it has the look and feel of
a surname. We discuss infra applicant's argument that WATSON
should be viewed as an historical name.
7
Serial No. 78204502
DARWIN], all geared toward use in a particular laboratory
setting and named after scientists who are well-known for
their contribution to those fields.” Brief at p. 16.
Applicant's argument is not persuasive for several reasons.
First, with the exception of “Galileo,” each of the names
applicant identifies in the “suite of software titles” is
the surname of a well-known scientist. Second, applicant’s
evidence in support of its argument only shows use of
“Newton,” “Watson” and “Galileo” – applicant’s argument in
identifying other names goes beyond its evidence of actual
use. Third, applicant’s argument is of little relevance
because applicant is applying for registration of the term
WATSON alone and conditions of actual use are typically of
little relevance in ex parte matters.
Additionally, applicant argues that the examining
attorney has not set forth a prima facie case. According
to applicant, the “[m]ere reference to [a] telephone
directory listing is not sufficient to carry the Examining
Attorney’s burden”; “the Examining Attorney cannot be saved
by her reference to additional evidence that still merely
shows that people use WATSON as a surname”; and “[b]y
failing to present any evidence that the surname
significance is the primary significance, the Examining
Attorney has failed to carry her burden and her refusal
8
Serial No. 78204502
must be reversed.” Brief at p. 8. The examining attorney
has not relied only on telephone directory listings and
evidence that “merely shows that people use WATSON as a
surname.” Her evidence from the Internet shows several
notable persons with the surname “Watson,” some of whom
applicant has deemed “famous.” Also, her evidence shows
large numbers of persons with the surname “Watson” and a
high ranking in terms of frequency of “Watson.”
In view of the foregoing, we reiterate that the
examining attorney has set forth a prima facie case that
“Watson” is primarily merely a surname. We do not find
applicant's arguments to the contrary persuasive. Once the
examining attorney has set forth a prima facie case, we
look to applicant's evidence to see if applicant has
rebutted the examining attorney's prima facie case.
Applicant argues that WATSON has a “myriad of
meanings” - namely, as the name of one or more historical
figures, as a given name and as a geographic location - and
has submitted a large amount of evidence in its attempt to
establish these meanings.
We turn first to applicant’s argument that one meaning
of “Watson” is that of an historical figure, and its
reliance on Lucien Piccard Watch Corp. v. Since 1868
Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (SDNY 1970)
9
Serial No. 78204502
(finding DA VINCI not primarily merely a surname because it
primarily connotes Leonardo Da Vinci). The “historical
figure” applicant identifies in its brief is James Dewey
Watson, “who, along with Francis Crick, discovered the
helical structure of the deoxyribonucleic acid (DNA)
molecule….” Applicant states that “[j]ust as we could not
have modern physics without the contributions of Sir Issac
Newton, so too we could not have modern genetics without
the contribution of James Watson.” Brief at p. 10.
Applicant also maintains – without any support - that “when
considered in light of the purchasing public of [the
WATSON] product – those in need of software to support
bioanalytical drug development – it is clear that they
would as quickly associate the name WATSON with James
Watson ….” Id.
We are not persuaded that the relevant purchasing
public would consider James Dewey Watson an historical
figure. Although the evidence shows that Mr. Watson has
made a significant contribution to science in his work as
one of two persons credited with discovering the helical
structure of the DNA molecule, and has won a Nobel Prize
for his work, neither this evidence nor any other evidence
of record establishes that his achievements are so
remarkable or so significant that he is an historical
10
Serial No. 78204502
figure. There is a difference between being an individual
that has made an historically significant contribution to
science and being an individual that has achieved such
renown as to become an historical figure. Additionally,
applicant has provided no evidence that purchasers of
applicant's goods regard him as an historical figure. This
is so whether we consider the average scientific or
technical professional who might purchase applicant's
identified goods, or even the individuals that applicant
appears to argue are the actual prospective purchasers,
i.e., those developing pharmaceutical products and
concerned with genetic issues related to development of
such products. All we have is applicant’s argument on this
point. We have no direct evidence that either the broader
class of prospective purchasers indicated by applicant's
identification or the specific class of asserted actual
purchasers would make such an association. Nor do we have
circumstantial evidence to support an inference of such
association. Further, as the examining attorney’s evidence
demonstrates and as further discussed below, there are many
persons with the surname “Watson”; the name is not unique
to James Dewey Watson. Accordingly, we are not persuaded
that even the subset of all prospective purchasers said to
be applicant’s actual purchasers – those who are involved
11
Serial No. 78204502
with “bioanalytical drug development” - would view the
primary connotation of WATSON as James Dewey Watson.5
Applicant also maintains “[i]n addition to James
Watson, there are numerous other famous Watsons including
scientists, industrialists, athletes and statesman [having
the name Watson]. A substantial, although by no means
exhaustive, list was provided in Applicant’s August 4, 2004
response to the Examining Attorney.” This list is a
printout from s9.com bearing the heading “The Biographical
Dictionary” which applicant submitted with its request for
reconsideration. It includes:
Thomas Augustus Watson, “an American telephone
pioneer” who assisted Alexander Graham Bell and
was the leader of research and engineering for
Bell Telephone Company;
Thomas Sturges Watson, a U.S. golfer who has won
the British Open, the Masters and the U.S. Open
numerous times;
John Broadus Watson, a U.S. behavioral
psychologist;
William Marvin Watson, U.S. administrator and
Postmaster General; and
James John Watson, former president and chairman
of International Business Machines Corp.
5
Applicant’s computer software is not limited to the field of
genetics. Applicant’s identification of goods states that the
software is used for “analyzing, reporting, and tracking
pharmaceutical drug study sample data for regulatory compliance.”
12
Serial No. 78204502
Applicant has not established with its evidence that
any of the sixteen individuals identified in the s9.com
webpage would be considered “historical figures” to
prospective purchasers of applicant’s goods. Simply
because an individual is mentioned on the s9.com website
entitled “The Biographical Directory,” and/or in the
dictionary.reference.com website which was submitted by
applicant with its response to the first Office action, and
because the individual is notable in a particular field,
does not establish that that individual is an historical
figure. Additionally, it does not necessarily follow that
if an individual is famous in a particular field, he or she
is an historical figure with notoriety akin to, for
example, Leonardo Da Vinci, as discussed in Lucien Piccard
Watch, supra, which was cited by applicant as support for
its argument.
Another problem with applicant’s argument is that
applicant is asserting that all of the sixteen persons
listed in the s9.com printout, and possibly more, are
historical figures. Applicant has argued that “the
existence of the number of famous Watsons, when considered
with all the evidence in the record, demonstrates that
WATSON has such significance as other than a surname that
it cannot be considered primarily merely a surname.” Brief
13
Serial No. 78204502
at p. 11. We disagree. The “historical figure” cases
discuss whether a particular surname is primarily
associated with, and evocative of, a particular historical
figure. A surname that would not be evocative of a
particular historical individual but, rather, would be more
evocative of numerous individuals, does not qualify for
registration as a historical name and is merely a surname
of numerous individuals with varying degrees of historical
significance.
The second non-surname significance that applicant
ascribes to “Watson” is that of a given name. In support
of its argument, applicant has submitted webpages from
ivillage.com showing that “Watson” is a boy’s name of
Teutonic/Anglo-Saxon origin; babynamesdirectory.com showing
“Watson” as a baby boy’s name;6 babynames.com showing the
name “Watson”; baby-names-plus.com showing “Watson” as a
boy’s name; bubbaboo.com showing “Watson” as a baby name;
and thenamemachine.com showing “Watson” as a common male
name from 1900 – 1920 (but not thereafter). Also,
applicant submitted a listing of thousands of names on
6
Applicant has also submitted a printout from Goeff’s Gender
Guesser, www.cgi.sfu.ca, showing “Watson” as the 199th most common
given name. This webpage is from a foreign website; information
about how common “Watson” is in a foreign country has no
probative value as to how “Watson” would be perceived in the
United States.
14
Serial No. 78204502
hundreds of pages taken from the “LexisNexis computerized
research database” purportedly showing persons in numerous
states having “Watson” as a given name.7 According to
applicant, the evidence shows “the number of people with
WATSON as a given name [is] on the same scale as the
Examining Attorney’s evidence of WATSON as a surname.”
Brief at p. 12. Applicant does not identify an approximate
total number of persons having the given name “Watson” and
merely contends that there are “in excess of 3,000 Watson’s
[sic] in each [of] California and Florida alone.” Brief at
p. 12. We are not persuaded by applicant’s argument or
evidence but rather conclude that the evidence applicant
maintains supports its claim that “Watson” is a given name
is vague, has not been reviewed or accurately tallied, and
in any case, would appear to be a far lower number than the
number of surname uses. Additionally, applicant’s evidence
7
In footnote 1 of its request for reconsideration, applicant
cautions that “Some of the database results may contain duplicate
results or people with the surname WATSON. As such, these
figures [set forth in a table summarizing the results broken down
by state] are for general reference only and the database print-
outs should be referenced for exact information.” It is unfair
to the examining attorney and the Board to “dump” hundreds and
hundreds of pages of information and expect the Board and the
examining attorney, with their limited resources, to ferret
though such pages to verify the accuracy of the evidence as
described in applicant’s submissions to the Office. It is
applicant's obligation to point to particular items of evidence
that support its position, not to invite the examining attorney
and the Board to search for it.
15
Serial No. 78204502
does not indicate that any famous person or person of
significance in a particular field has the given name
“Watson.” This is to be contrasted with the large number
of individuals who the examining attorney and even
applicant point out are notable and have “Watson” as a
surname. Thus, on balance, we find that the evidence
presented by applicant demonstrates that the surname
significance is far more dominant.
The third non-surname significance that applicant
ascribes to “Watson” is geographic. Applicant has
submitted a webpage from placesnamed.com that shows
geographic locations in twenty-four states bearing the name
Watson, and Watson Center in Mississippi. Also, applicant
submitted an Internet article from miamitodaynews.com
regarding Watson Island, Florida, discussing a proposed
marina, “one of a plethora of projects planned for the 86-
acre island just east of downtown Miami….”8 Applicant’s
argument is not well taken. Most of the entries in the
placesnamed.com submission for “Watson” do not indicate the
population size. Those that do indicate the population
show very small populations. For example, in 1990, the
8
At p. 13 of its brief, applicant also references Brown
University’s Watson Institute for International Studies in Rhode
Island. Watson Institute is not a geographic place.
16
Serial No. 78204502
placesnamed.com webpage shows that Watson, Illinois had a
population of 646; Watson, Minnesota had a population of
211; and Watson, Missouri had a population of 137. See
also the dictionary.reference.com webpage submitted by
applicant with its response to the first Office action.
These populations are minor and do not establish that the
primary meaning of “Watson” is geographical. See Harris-
Intertype, 186 USPQ at 239, fn.4, involving the mark HARRIS
(“Harris, Arizona, is shown … to have zero population;
Harris, Kansas, is shown with a population of 41; Harris,
Minnesota, 559; Harris, Missouri, 174; and Harris,
Oklahoma, 100.”). There is no indication of Watson
Center’s population. Other than for Watson Island,
Florida, applicant has not introduced any evidence of the
significance or notoriety, if any, of these communities.
As for Watson Island, the record does not reflect its
population, and we do not assume that simply because Watson
Island is proximate to Miami that it is a well-known
geographic location likely to be impressed upon the
consciousness of the consuming public. Further, as the
examining attorney has noted, the fact that a term is shown
to have some minor significance as a geographical term will
not dissipate its primary significance as a surname. See
In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB
17
Serial No. 78204502
1993). We point out too that it is common knowledge that
places are often named after individuals. See In re
Champion International Corp., 229 USPQ 550 (TTAB 1985).
Also, there is no persuasive evidence in the record that
would indicate any significant recognition by the
purchasing public of an association between applicant’s
mark and any of these geographic locations named “Watson”
or with “Watson” as part of a place name.
Additionally, applicant argues that “past Trademark
Office practice, while not binding, has shown a proclivity
to treat WATSON as not so common as to be primarily merely
a surname.” Applicant has cited what it labels as “WATSON-
nominative marks” that have been registered without a
disclaimer or a claim of acquired distinctiveness.
Applicant has also argued that “the PTO has consistently
registered marks for words that have some surname
significance and similar surname popularity to WATSON
without a showing of acquired distinctiveness,” noting
marks containing “Hughes, Marshall, Fisher, Morris, Carter,
and Murray.” Brief at p. 14. The “WATSON-nominative”
registrations are inapposite because they include
additional wording and/or designs which understandably take
such marks out of the ambit of Section 2(e)(4), and the
remaining registrations are inapposite because they are for
18
Serial No. 78204502
different names, and many include additional wording and/or
designs. Whether a term sought to be registered is
primarily merely a surname within the meaning of Section
2(e)(4) of the Trademark Act must necessarily be resolved
on a case by case basis, taking into account a number of
factual considerations. In re Sava Research Corp., 32
USPQ2d 1380 (TTAB 1994). Cf. In re First Draft, Inc., 76
USPQ2d 1183 (TTAB 2005) (Board determined registrability of
author's pseudonym as a mark for a series of books on
evidence of record, notwithstanding the applicant's
submission of files from other registrations purportedly
establishing an Office practice of registering such names).
Upon balance, therefore, three of the four factors
bearing upon the issue favor a determination that the
primary significance of the mark WATSON to the purchasing
public for applicant's “computer software for use in
laboratory information management, namely, software used in
analyzing, reporting, and tracking pharmaceutical drug
study sample data for regulatory compliance” is that of a
surname; and the other factor is neutral. Although
applicant has demonstrated that the term “Watson” has some
geographical and given-name significance, the record
reflects that it is the surname significance of “Watson”
which is far more common and which predominates. We find,
19
Serial No. 78204502
in view thereof, that the examining attorney has presented
evidence sufficient to establish prima facie that
applicant's mark is primarily merely a surname within the
meaning of Section 2(e)(4) of the statute and that
applicant has failed to rebut such showing.
DECISION: The refusal to register the mark under
Section 2(e)(4) of the Trademark Act is affirmed.
20