In Re Hutchinson Technology Incorporated

BISSELL, Circuit Judge,

dissenting.

The majority concludes that the United States Patent and Trademark Office (PTO) failed to establish a prima facie case that HUTCHINSON TECHNOLOGY is “primarily merely a surname” under section 2(e)(3) of the Lanham Act, 15 U.S.C. § 1052(e)(3) (1982). I respectfully dissent.

The majority points to two errors in the analysis of the Trademark Trial and Appeal Board (Board). First, the majority holds that the Board improperly dissected the mark and did not consider what impression the mark in its entirety would have on the purchasing public. I disagree. It is clear from reading the Board’s decision that the Board considered the impact of the entire mark. See In re Hutchinson Technology Inc., Serial No. 570,503, slip op. at 4 (TTAB August 19, 1987) (“[W]e find that the inclusion of ‘TECHNOLOGY’ in the mark does not remove the surname significance of ‘HUTCHINSON’, or create the impression that HUTCHINSON TECHNOLOGY is not primarily merely a surname.”).

Second, the majority holds that the Board was clearly erroneous in finding that the word “technology” was “merely descriptive” of applicant’s goods. The Board did not make that finding. It found that applicant had “conceded common usage of ‘technology’ in connection with goods of this type,” id. at 4, and that this, coupled with the surname significance of Hutchinson, did not remove HUTCHINSON TECHNOLOGY from a section 2(e)(3) prohibition. I fail to see the Board’s error. See In re Louis De Markus Corp., 136 USPQ 677 *556(TTAB 1963) (finding the mark “Duffey Process” is primarily merely a surname because the word “process” adds nothing to the registrability of a mark identifying a carbon dioxide producing and purifying apparatus).

Furthermore, the majority places too high a burden on the PTO with regard to making out a prima facie case against registration. See In re Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ 652, 653 (Fed.Cir.1985) (stating that PTO has initial burden of establishing prima facie case). It is beyond cavil that the PTO must provide sufficient evidence to support a finding that, when viewed as a whole, the primary significance of the mark to the purchasing public is that of a surname. See e.g., In re Kahan & Weisz Jewelry Mfg., 508 F.2d 831, 832, 184 USPQ 421, 422 (CCPA 1975). This is typically accomplished with citations to telephone directories that list the particular surname at issue, along with the lack of dictionary definitions. See generally, 1 J. McCarthy, Trademarks and Unfair Competition § 13:11, at 612 (2 ed. 1984) (stating that PTO establishes initial burden by “telephone book test”). The PTO did that in this case. The combination of telephone listings with Hutchinson’s concession regarding “technology” is sufficient to make out a prima facie case.

Applicant’s only rebuttal evidence established that Hutchinson is the name of a small town in Minnesota where applicant’s offices are located and that no employees of the applicant had the surname Hutchinson. The PTO properly rejected this evidence as insufficient to overcome the prima facie case. Applicant’s argument attacking the sufficiency of the PTO’s evidence without rebuttal evidence of its own is unpersuasive. See Darty, 759 F.2d at 17-18, 225 USPQ at 653-54 (argument without evidence is unpersuasive). The PTO did not err in refusing registration of HUTCHINSON TECHNOLOGY under section 2(e)(3). Therefore, I would affirm.