The Board affirmed a Section 2(e)(4) surname refusal of BUTTERFIELDS for auction and appraisal services. Applying the Benthin factors, the Board found that the applied-for mark is not a rare surname, that it has no recognized non-surname significance, and that it has the structure and pronunciation of a surname. Judge Ellen J. Seeherman agreed with the result, but took the opportunity, in a seven-page concurrence, to explain her view of the proper approach to Section 2(e)(4), an approach that focuses on the rareness of the surname. In re Bonhams & Butterfields Auctioneers Corp., Serial Nos. 85443480 and 85443485 (December 29, 2016) [not precedential].

Judge Seeherman set out her view of Section 2(e)(4) in In re “Baik” [TTABlogged here]. On occasion, a Board panel has followed her approach. Here, however, the panel hewed to its recent line of Section 2(e)(4) rulings:

The majority follows the reasoning of several decisions recently handed down by the Board, namely In re Integrated Embedded, In re Eximius Coffee and In re Adlon, cited in the majority opinion. In those decisions, the Board makes it clear that a mark will be found to be primarily merely a surname as long as there is evidence that some people have that surname, no matter how rare the surname is, as long as it is perceived as a surname. The opinions now use the language whether the term is “encountered” as a surname, rather than “the degree of a surname’s rareness,” the language quoted in Benthin.

In Judge Seeherman’s evolving view, the degree of rareness of the surname should be the first consideration:

I think the Board must first determine whether there are a sufficient number of people with a particular surname for the mark to even rise to the level of a surname. That is, there must first be a showing that there is some threshold number of people with that surname to make out a prima facie case for refusal under Section 2(e)(4).

The analysis relied upon by the majority, according to Judge Seeherman, ignored the purpose of the Section 2(e)(4) surname prohibition:

“The purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses, in the same manner that merely descriptive terms are prohibited from registration because competitors should be able to use a descriptive term to describe their own goods or services.” Binion, 93 USPQ2d at 1540.

If the surname is rare, there is no need to keep it available for anyone with that surname just because there is a theoretical possibility that another might wish to use the surname for goods or services related to those of the applicant.

The Lanham Act has never been as rigidly interpreted with respect to other grounds of refusal as Section 2(e)(4) is now interpreted under the Board’s current approach. Now, a mark that is a rare surname may be refused registration even if the surname has little exposure to the public, as long as it has no other meaning, or looks and sounds like a surname, or articles can be found referring to a few people having the surname.

Accordingly, in my view, the rareness of a surname must be part of the threshold question of whether there is sufficient evidence of surname use for the mark to qualify as being a surname, and only if the answer to that question is “yes” should the analysis reach a consideration of whether the mark will be recognized as a surname.