The Board sustained a rare Section 2(e)(4) opposition to registration of the mark AYOUB for “retail carpeting and rug stores” and “carpet and rug cleaning services,” finding that applicant failed to satisfy the requirement of Section 2(f) that the use of its mark be “substantially exclusive.” Ayoub, Inc. and Ayoub Supply LLC v. ACS Ayoub Carpet Service, Opposition No. 91211014 (March 31, 2016) [precedential].
In response to a Section 2(e)(4) surname refusal, applicant amended the subject application to seek registration under Section 2(f), claiming “substantially exclusive and continuous use” of the mark for at least the immediately preceding five years. The only issue on appeal was whether AYOUB had acquired distinctiveness under Section 2(f). Applicant had the ultimate burden of persuasion on the issue. Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1010, 6 USPQ2d 1001, 1010 (Fed. Cir. 1989).
Opposers pointed to the use of the identical surname by themselves and by various third parties, for identical or related services. Opposers’ own use of the surname Ayoub from 1996 to 2015 was “not insubstantial.” Testimonial and documentary evidence established the use of Ayoub by third-parties in the same or similar business as applicant. Applicant essentially admitted that its use of Ayoub was not substantially exclusive when it stated at its website:
Ayoub Carpet Service is NOT affiliated with any other Ayoub. *** Some of you might be confused of (sic) the various “Ayoub” entities serving the Washington DC metro area in the cleaning and flooring business. Although we are all related and do a good job, we each run our businesses separately and uniquely apart from one another.
Applicant provided evidence that it objected on at least five occasions to use of “Ayoub” by Opposers and third parties. However, all of those entities were using “Ayoub” during the time period for which applicant claimed exclusive use, and all but one continued to do so after objection. The Board concluded that “the public has been exposed to many uses incorporating the name Ayoub in connection with carpet and rug cleaning and repair businesses.”
The Board noted that “absolute exclusivity” is not required to satisfy Section 2(f) – see L.D. Kitchler Co. v. Davoli, Inc., 192 F.3d 1349, 52 USPQ2d 1307 (Fed. Cir. 1999) – but “the widespread use of the surname Ayoub by unaffiliated rug, carpet and flooring businesses is inconsistent with Applicant’s claim of acquired distinctiveness of AYOUB. Indeed, the proliferation of such uses clearly shows that Applicant’s use is not ‘substantially exclusive.” See, e.g., Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984); Quaker State Oil Reining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972); Miller v. Miller, 105 USPQ2d 1615, 1624-25 (TTAB 2013).
Concluding that applicant failed to establish acquired distinctiveness, the Board sustained the opposition.