The Romanov name. It invokes history, tragedy, even mystery. Remember the tale of Anastasia's improbable survival of the mass shooting in Yekaterinburg, only recently proven false?
Enter The Hyman Companies, Inc., based on Allentown, Pa., a jewelry retailer that operates a chain of accessory boutiques in the United States and Canada. Hyman brands include names familiar to shoppers, such as Landau and Landau Direct, Landau Costume Jeweler, NLH Jewels, Boccelli and Nat Landau Hyman Jewels.
Despite the Romanovs' untimely demise (or perhaps in part because of it!), Hyman had sought to register the mark ROMANÓV (in standard characters) at the U.S. Patent and Trademark Office. It wanted to use the mark for decorative eggs made of non-precious materials and ones made of precious materials, as well as jewelry, table clocks, picture frames and decorative porcelain boxes. But the USPTO’s examiner refused registration of the mark pursuant to Section 2(e)(4) of the Lanham Act, 15 U.S.C. § 1052(e)(4), on the ground that the applied-for mark is primarily merely a surname. In June this year, the Board disagreed and reversed the refusal.
Section 2(e)(4) of the Lanham Act provides that, absent a showing of acquired distinctiveness, registration must be refused on the Principal Register if the proposed mark is primarily merely a surname — and the examiner bears the initial burden of establishing so prima facie. If an examiner establishes this case, the burden shifts to the applicant to rebut the showing.
The Board tends to focus its analysis on the impact the applied-for mark has or would have on the purchasing public, because it is that impact or impression that should be evaluated in determining whether or not the primary significance of a word when applied to a product is as a surname. If it is, and it is only that, then it is primarily merely a surname.
The Board considers five factors in determining whether a proposed mark is primarily merely a surname. They are:
- The degree of the surname's “rareness”
- Whether anyone connected with the applicant has the involved term as a surname
- Whether the mark has any recognized meaning other than as a surname
- Whether the mark has the “look and sound” of a surname
- Whether the manner in which the mark is displayed might negate any surname significance
Because Hyman applied to register the mark in standard character form, the Board did not consider the fifth factor. It did, however, address each of the other four.
In considering the degree of the surname’s rareness, the examiner had argued that ROMANÓV is not a rare surname but a common one. To support this assertion, the Examiner submitted findings from a search on the 411.com Free Directory Assistance (www.411.com), showing “100+ Results” for the surname ROMANÓV. The examiner attached nine of these individual listings as illustrations.
Unfortunately for the examiner, the Board felt that the search results not only did not support a finding that ROMANÓV is a common surname but rather supported a contrary one: that Hyman’s proposed mark is a rare surname. To support its conclusion, the Board cited In re Joint-Stock Co., the so-called Baik case, which held that the surname Baik was an “extremely rare surname” based on a listing of 456 individuals with that surname in the Verizon superpages.com database.
Even more strongly in favor of reversing the examiner's findings was In re Yeley, which held that YELEY was a rare surname based on a listing of only 147 individuals from a directory of the entire United States. On the first factor, therefore, the Board reversed the examiner's opinion.
On the second factor — whether anyone connected with the applicant has the involved term as a surname — Hyman had argued that because no person connected with Hyman bears the surname ROMANÓV, it favors a finding that the proposed mark is not primarily merely a surname. While the second factor alone is not determinative, the Board agreed that it was undisputed that no one connected with Hyman has the surname ROMANÓV.
The third factor tackled the relative fame of the storied Romanov name, in addressing whether the mark has any recognized meaning other than as a surname. The USPTO's examiner had contended that because ROMANÓV has “no dictionary definition or meaning, either obscure or readily recognized,” it has no significance other than as a surname. The examiner also argued that because ROMANÓV does not refer to “one highly famous individual” but rather several from the House of Romanov (for example, Peter the Great, Catherine the Great, and Nicholas II), it remains primarily merely a surname.
For its part, Hyman had countered that because ROMANÓV is a name of historical significance identifying the House of Romanov, the imperial dynasty that ruled Russia from 1613 to 1917, it is not primarily merely a surname.
In its opinion, the Board felt compelled to point out that the examining attorney’s assertion that there exists no dictionary definition for the term Romanov was belied by that attorney’s own evidence. The Board pointed out that U.S. English dictionary entries for the term ROMANÓV do exist, and more importantly, they show that the term is recognized as identifying the Russian imperial dynasty that ruled from 1613-1917. While it is obvious that the dynasty derived its name from the surname of its members, and that the converse is true as well (that is to say that members of that dynasty bear that surname), this is distinct from the overall impact or impression of the term.
Simply put, in the Board's opinion the term ROMANÓV has significance apart from a surname, as the designation of the Russian imperial dynasty. This is especially true when considered within the context of the items that the applicant identified as the goods it planned to use the mark for — that is, ones that the Board considered were associated with royalty, and in particular the Romanov dynasty. Accordingly, the Board felt confident in opinion that consumers encountering the applicant’s mark were more likely to think of the House of Romanov, and not a particular famous individual or individuals bearing that surname.
This fourth factor — whether the mark has the “look and sound” of a surname — is highly subjective, and involves whether the applicant’s proposed mark has the “structure and pronunciation” or “the look and sound” of a surname. Because this descriptive is so indefinite in how it could and should be applied, the Board did not spend much time concluding that ROMANOV has the look and feel of a surname.
Romanov's meaning? A trade name mystery
The assassination in the aftermath of the Russian Revolution of the entire family of the Romanovs — the Tsar and Tsarina and their children — has become shorthand for the violence of radical revolution, however romanticized (or not) is one's idea of the dynasty.
But in the aftermath of the decision at the TTAB in this case, can we feel any more confident about applying to register a mark that sounds like a surname? I surely don't. I'm still confused as to how ROMANOV can have the look and feel of a surname on one hand, and yet not be rejected as being primarily merely a surname, on the other.
Is this judgment solely to rest on the finding that there simply aren't many people currently living in the U.S. with that last name? Can we make that leap? Would we be willing to make that leap when clearing a client’s mark? And how does the fact that Romanov refers to an entire family as opposed to an individual make any sense in giving it the green light?
The romantic mystery of Anastasia's survival was proven a baseless myth in 2007. Unfortunately, we don't have DNA evidence to guess at future rulings of the TTAB. Decisions about surnames may be even more unclear after this ruling than before.