Is BARSKI Primarily Merely a Surname?
In a 2021 non-precedential case, the Trademark Trial and Appeal Board reversed the §2(e)(4) refusal to register the mark BARSKI for or beverage glassware, pitchers, ice buckets and various other items in Class 21 and found that the mark was not primarily merely a surname.
Under §2(e)(4) a term is primarily merely a surname “if, when viewed in relation to the goods or services for which registration is sought, its primary significance to the purchasing public is that of a surname.” See Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017). If the mark is primarily merely a surname, and absent acquired distinctiveness, it cannot be registered on the Principal Register. When determining whether or not a term is primarily merely a surname there is no specific rule or amount of evidence necessary to show that the mark would be perceived as primarily merely a surname – the Board must base its decision on the facts at hand in each case. See In re Pohang Iron & Steel Co., 230 USPQ 79, 79 (TTAB 1986). Though there is no test, there are certain circumstances that are taken into consideration when examining the mark to decide if the public would perceive the mark as primarily merely a surname. Following are the circumstances applicable in the case at hand: (1) The frequency and extent of public exposure to the term as a surname, (2) Whether the term is the surname of anyone connected with Applicant, (3) Whether the term has any recognized meaning other than as a surname (4) And whether the term has the structure and pronunciation of a surname. See Darty, 225 USPQ at 653-54; In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 n.4 (TTAB 2016).
The Board began its examination of the proposed mark BARSKI by first determining whether or not the term was indeed a surname. It found that though the BARSKI was not associated with the Applicant, the evidence of record showed that multiple people in the United States did have the surname BARSKI. Moreover, the name, which is of Polish origin, had no “ordinary language meaning,” and “ surnames of Polish origin often end with the letters ‘SKI.’”
The Applicant argued that the proposed mark BARSKI is not primarily merely a surname, and the public would perceive it as a fanciful term. The Board dismissed the Applicant’s evidence from UrbanDictionary.com that showed multiple definitions for the terms “BARSKY” and “BARSKIES,” as neither of which were the actual proposed mark BARSKI. The Applicant then argued that BARSKI was a coined term that was a combination of the Applicant’s founders’ names (“BaumgARten and ZablotSKY [pronounced ‘ski’]”). However, the Board stated, “Applicant’s argument concerning the origin of ‘Barski’ as a combination of Applicant’s founders’ surnames, neither of which includes the three-letter strings ‘bar’ or ‘ski,’ is unconvincing.”
Finally, the Board turned back to the question at hand: When applied to Applicant’s goods, would the purchasing public be more likely to perceive the mark BARSKI, in standard characters, as a surname rather than as anything else? “[I]t 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.” See Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pat. 1955). Ultimately, the Board stated, “The evidence in this case does not show sufficient public exposure to the uncommon surname BARSKI from which we can conclude that consumers likely would perceive BARSKI as a surname.” Further it found that when the proposed mark was associated with the identified goods, consumers would likely perceive BARSKI as a coined term, and “particularly as a clever bar-related play on the noun ‘brewski’ (a U.S. slang term for ‘beer’), and that this meaning would be the primary perception of BARSKI to the public.” So, the Board reversed the §2(e)(4) refusal to register the mark BARSKI.