TTAB Precedential Opinion In re Colors in Optics, Ltd. Illustrates Evidence Needed to Rebut a Prima Facie Showing that a Mark is Primarily Merely a Surname

March 2, 2020

By: Sheri L. Gordon

Colors in Optics sought to register the mark J HUTTON (standard characters) for eyewear, eyewear frames and sunglasses.  The Examining Attorney refused registration on the ground that the mark is primarily merely a surname.  Colors in Optics argued in response that the mark is not merely a surname, but rather a reference to a specific individual because it includes the initial “J”. Op. at 2.  The Examining Attorney was not persuaded and issued a final refusal. Id.  Colors in Optics appealed the decision to the TTAB.

The Examining Attorney presented evidence showing the use of “Hutton” as a last name in the U.S. to support the refusal.  Colors in Optics did not challenge this evidence and admitted that “Hutton” is the last name of Jade Hutton, its Chief Creative Officer and designer.  Colors in Optics submitted Jade Hutton’s consent to use her name in the mark and abstracts from the USPTO’s Trademark Electronic Search System of third-party registered marks consisting of surnames preceded by one or more initials that issued without a claim of acquired distinctiveness as evidence supporting its position. Op. at 2.  The Examining Attorney issued a final refusal in which she explained that Colors in Optics failed to submit any evidence showing that the designer goes by the name “J HUTTON” or is known as “J HUTTON”.  The Examining Attorney submitted as further evidence portions of Colors in Optics’s website that identify the founder and CEO as Sanford Hutton, and press coverage of Colors in Optics that refer to the names “Jade Hutton” and “Hutton”, but not “J Hutton”. Op. at 3.  Colors in Optics unsuccessfully sought reconsideration, relying on additional examples of registered marks that appeared to consist of surnames preceded by one or more initials that issued without a claim of acquired distinctiveness. Id.

The TTAB affirmed the refusal to register the mark.  In its decision, the TTAB confirmed that the test for determining whether a mark is primarily merely a surname “‘is the primary significance of the mark as a whole to the purchasing public.’” Op. at 3 (quoting In re Hutchinson Tech. Inc., 852 F.2d 552 (Fed. Cir. 1988)).  The TTAB also identified the following non-exclusive inquiries that may be relevant to determining whether a mark is primarily merely a surname:

1.    The degree of a surname’s rareness;
2.    Whether anyone connected with applicant has that surname;
3.    Whether the term has any recognized meaning other than that of a surname;
4.    Whether the term has the “structure and pronunciation” of a surname; and,
5.    Whether the stylization of lettering is distinctive enough to create a separate commercial impression.

Id. at 4 (explaining that these considerations are examples of inquiries that may lead to evidence of the purchasing public’s perception of a term’s primary significance).

On the merits of the present case, the TTAB first observed that Colors in Optics did not seriously dispute that “Hutton” is primarily merely a surname. Op. at 4-5.  The TTAB then explained that its decision in In re J.J. Yeley, 85 USPQ2d 1150 (TTAB 2007), provides “a helpful roadmap” for applicants claiming that the use of initials plus a surname results in a personal name, rather than merely a surname. Id. at 5.  In that case the TTAB reversed the surname refusal of the mark “J. J. YELEY” after finding that the evidence showed that (1) the name had a recognized meaning as a mark due to Mr. Yeley’s popularity as a race car driver, and not merely as a surname; (2) “Yeley” was a rare surname; and (3) “J. J. YELEY” had the look and sound of a personal name because it included two initials. Id.  The TTAB went on to compare the evidence of record in the present case to the evidence in Yeley, and concluded that the record here fails to establish that the mark “as a whole is or will be recognized by consumers as a reference to a particular individual.” Id. at 6-7 (observing that no declaration describing use of J Hutton as a personal name was submitted and no evidence showed that consumers identify Jade Hutton as J Hutton).  The TTAB further concluded that the Examining Attorney made a prima facie showing that the mark “J HUTTON” is primarily merely a surname. Id. at 7.

The TTAB, though, also recognized that the present case differs from Yeley because the mark in that case was comprised of two initials (each with a period) plus a last name. Op. at 7-8.  Discussing prior decisions and acknowledging that no per se rule regarding the addition of initials to surnames exists, the TTAB explained:

Adding a single initial to a surname may lead consumers to perceive the mark as a personal name, while in some instances even adding two initials to a surname may not create such an impression. In all cases involving a surname preceded by one or more initials, it is the factual record that matters most, because only from such a record can we make reliable findings about consumer perception.

Id. at 7-8.  With this in mind, and weighing all the evidence of record, the TTAB concluded that the prima facie case showing that the mark is primarily merely a surname was not rebutted because Colors in Optics failed to satisfy its burden of coming forward with evidence probative of consumer perception of its mark as identifying a specific person. Id. at 8-9.  The TTAB observed that instead of submitting such evidence, Colors in Optics relied entirely on argument and third-party registrations of surnames plus one or more initials—which does not address how consumers will perceive the “J HUTTON” mark. Id. at 9.  The TTAB explained that “[s]ome evidence showing how relevant consumers are likely to perceive the applied for mark was necessary to rebut the prima facie showing, not argument alone.” Id.  Rejecting the assertion that consumers will perceive the “J HUTTON” mark as the personal name of Jade Hutton, the TTAB reiterated that no evidence to support this contention is in the record. Id.