REM Associates, L.P.

This Opinion Is Not a
Precedent of the TTAB

Mailed: June 27, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re REM Associates, L.P.
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Serial No. 86881376
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Jessica Bromall Sparkman and Bernard R. Gans of Jeffer Mangels Butler &
Mitchell LLP, for REM Associates, L.P.

Anthony Rinker, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.

_____

Before Ritchie, Hightower, and English,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

Applicant REM Associates, L.P. applied to register CANDLER HOTEL, in

standard characters and with “HOTEL” disclaimed, on the Principal Register for (as

amended) “hotel services; hotel related services, namely, making hotel reservations

for others, providing temporary lodging services in the nature of a hotel, providing

food and beverages services at a hotel,” in International Class 43.1

1 Application Serial No. 86881376, filed January 20, 2016, based on Applicant’s allegation of
a bona fide intention to use the mark in commerce pursuant to Trademark Act Section 1(b),
15 U.S.C. § 1051(b). The Examining Attorney accepted the amendment to the identification
of services in the first paragraph of his appeal brief. 9 TTABVUE 3.
Serial No. 86881376

The Trademark Examining Attorney refused registration on the ground that

Applicant’s mark is primarily merely a surname under Trademark Act Section

2(e)(4), 15 U.S.C. § 1052(e)(4). After the Examining Attorney denied Applicant’s

request for reconsideration, the appeal resumed. We affirm the refusal to register.

I. Refusal under Section 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. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123

USPQ2d 1411, 1413 (Fed. Cir. 2017); In re Beds & Bars Ltd., 122 USPQ2d 1546, 1548

(TTAB 2017). Whether the primary significance of an applied-for mark is merely that

of a surname is a question of fact. See In re Etablissements Darty et Fils, 759 F.2d 15,

225 USPQ 652, 653-54 (Fed. Cir. 1985). There is no rule as to the kind or amount of

evidence necessary to make out a prima facie showing that the applied-for mark

would be perceived as primarily merely a surname. This question must be resolved

on the specific facts presented in each case. Id. at 654; see also, e.g., Beds & Bars, 122

USPQ2d at 1548. The entire record is examined to determine the primary significance

of a term.

Applicant’s mark combines CANDLER with HOTEL, a generic term in association

with Applicant’s services. The addition of wording that is incapable of functioning as

a mark (i.e., a generic name for the goods or services) does not preclude a finding that

the mark as a whole is primarily merely a surname under Section 2(e)(4). See, e.g., In

re Weiss Watch Co., 123 USPQ2d 1200, 1207 (TTAB 2017) (“There can be no dispute

that when used in connection with watches, the additional words WATCH
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Serial No. 86881376

COMPANY are incapable of source-identifying function and, viewing the mark as a

whole in the context of the identified goods, do not alter the primary significance of

the proposed mark WEISS WATCH COMPANY as primarily merely a surname.”); In

re Woolley’s Petite Suites, 18 USPQ2d 1810, 1812 (TTAB 1991) (holding WOOLLEY’S

PETITE SUITES for hotel and motel services primarily merely a surname); In re

Pickett Hotel Co., 229 USPQ 760, 762-63 (TTAB 1986) (refusing to register stylized

mark PICKETT SUITE HOTEL for “hotel, restaurant, and cocktail lounge services”).

In Darty, the Federal Circuit considered several factors in determining whether

the purchasing public would perceive a proposed mark as primarily merely a

surname, including whether the applicant adopted a principal’s name and used it in

a way that revealed its surname significance; whether the term had a nonsurname

“ordinary language” meaning; and the extent to which the term was used by others

as a surname. Id., 225 USPQ at 653. The factors laid out in In re Benthin Mgmt.

GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995), also are examples of inquiries that

may lead to evidence regarding the purchasing public’s perception of a term’s primary

significance. These considerations are not exclusive, and any of these circumstances

– singly or in combination – and any other relevant facts may shape the analysis in

a particular case. E.g., In re Integrated Embedded, 120 USPQ2d 1504, 1506 n.4

(TTAB 2016); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016).2 We

address in turn the matters relevant to our analysis of this case.

2In Benthin, 37 USPQ2d at 1333-34, the Board stated that “factors” to be considered in
determining whether a term is primarily merely a surname include (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
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Serial No. 86881376

A. Whether CANDLER Is Rarely Encountered as a Surname

We first consider the frequency of, and public exposure to, use of CANDLER as a

surname. See Darty, 225 USPQ at 653. Even a rare surname may be held primarily

merely a surname if its primary significance to purchasers is that of a surname. “The

relevant question is not simply how frequently a surname appears, however, but

whether the purchasing public for Applicant’s services is more likely to perceive

Applicant’s proposed mark as a surname rather than as anything else.” Beds & Bars,

122 USPQ2d at 1551 (finding BELUSHI’S to be primarily merely a surname).

The Examining Attorney submitted the following evidence:

• The first 150 results from a Lexis.com search for the surname “Candler” in
a nationwide telephone directory of names that returned 2,997 results.3
• Nineteen articles from U.S. newspapers from 2012 to 2016 referring to
people with the surname “Candler,” including Asa Griggs Candler,
discussed in the next subsection.4
• A Wikipedia.org entry for the surname “Candler” listing eight “notable”
Americans with the surname.5

We also take judicial notice of data from the 2010 U.S. Census, which counted 2,386

people with the surname “Candler.”6 Based on the record, we find that the relevant

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.
Where, as here, the mark is in standard characters, it is unnecessary to consider the fifth
factor. Integrated Embedded, 120 USPQ2d at 1506 n.4.
3May 12, 2016 Office Action at TSDR 14-20. All citations to the prosecution record are to the
downloaded .pdf form of the Trademark Status and Document Retrieval (“TSDR”) database.
4 Id. at TSDR 21-47.
5 Id. at TSDR 48.
6 “File B: Surnames Occurring 100 or more times,” at the web page “Frequently Occurring
Surnames from the 2010 Census” (https://www.census.gov/topics/population/genealogy/data/
2010_surnames.html) (last accessed June 25, 2019). The Board may take judicial notice of
census data. E.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127 n.6 (TTAB 2015).

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Serial No. 86881376

public has sufficient exposure to CANDLER as a surname that it is likely to be

perceived as having surname significance.

B. Whether CANDLER is the Surname of Anyone Connected with
Applicant

We next consider whether anyone who has a publicly known connection with

Applicant has the surname “Candler.” Applicant submitted a Wikipedia.org entry for

Asa Griggs Candler (1851-1929), who established the Coca-Cola Company in 1888

and served as mayor of Atlanta from 1916 to 1919.7 Asa Candler built the Candler

Building in downtown Atlanta, which was completed in 1906 and will house

Applicant’s hotel.8 Applicant has operated the Candler Building since 1979, including

during its closure for renovations since 2016.9 There is no evidence or argument that

anyone with the surname “Candler” will have any contemporary public connection

with Applicant or its hotel, which is slated to be a Hilton Curio property.10

Nevertheless, news articles and promotional materials of record concerning

Applicant’s planned hotel demonstrate that Applicant markets its historic connection

to Asa Candler and his Candler Building.11 This supports a finding that the public

perceives CANDLER primarily as a surname. See In re Adlon Brand GmbH & Co.

7December 21, 2016 Petition to Revive Application (“Petition to Revive”), Exhibit A, TSDR
58-62.
8 Id., Exhibits B-H, TSDR 63-94; see also September 27, 2018 Request for Reconsideration
(“Recon. Request”), TSDR 230-73.
9 Recon. Request, Declaration of Stephen T.B. Miller at ¶¶ 2, 5, TSDR 230.
10 Id., TSDR 234-63.
11See, e.g., Petition to Revive, Exhibits B-C, H, TSDR 63-70, 91-94; Recon. Request, TSDR
234-63.

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Serial No. 86881376

KG, 120 USPQ2d 1717, 1722 (TTAB 2016) (finding evidence indicated hotel was

named ADLON because that was the surname of its founder).

Applicant argues that CANDLER HOTEL is not primarily merely a surname

because CANDLER identifies both a historical place and a historical person, that is,

both Asa Candler and his Candler Building. See Appeal Brief, 7 TTABVUE 9.

Applicant misconstrues the level of recognition necessary to move a surname from

the category of being primarily merely a surname to chiefly signifying a historical

place or person. Compare Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp.,

314 F. Supp. 329, 165 USPQ 459, 462 (S.D.N.Y. 1970) (holding DA VINCI not

primarily merely a surname because it primarily connotes Leonardo Da Vinci)

with Pickett Hotel, 229 USPQ at 762 (holding PICKETT SUITE HOTEL primarily

merely a surname despite applicant’s evidence that “Pickett” was the surname of a

famous Civil War general) and In re Champion Int’l Corp., 229 USPQ 550, 551

(TTAB 1985) (holding McKINLEY primarily merely a surname despite being the

name of the twenty-fifth U.S. president). On the facts before us, the significance of

CANDLER, designating a person and building of some localized renown, is akin to

PICKETT as a semi-historical surname rather than to the historical figure

DA VINCI. See In re Binion, 93 USPQ2d 1531, 1537-38 (TTAB 2009).

C. Whether CANDLER Has Any Recognized Meaning Other Than As
a Surname

No evidence of record indicates that CANDLER has any recognized meaning other

than as a surname.

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Serial No. 86881376

D. Whether CANDLER Has the Structure and Pronunciation of a
Surname

Finally, we determine whether CANDLER has the structure and pronunciation of

a surname. In support of their respective positions, applicants and examining

attorneys may submit evidence that, due to a term’s structure or pronunciation, the

public would or would not perceive it to have surname significance. Neither Applicant

nor the Examining Attorney introduced any evidence addressed to this consideration.

We find the structure and pronunciation of CANDLER to be neutral.

E. Conclusion as to Surname Refusal

There is no evidence that any other issue is relevant to our assessment of the

nature of Applicant’s mark. We find that the record, taken as a whole, establishes

that the primary significance of CANDLER to the purchasing public is merely that of

a surname within the meaning of Section 2(e)(4).

II. Acquired Distinctiveness

We turn now to Applicant’s assertion that CANDLER HOTEL should not be

refused as primarily merely a surname because the CANDLER portion of the

proposed mark has acquired secondary meaning.

The facts of this appeal are nearly on all fours with In re Olin Corp., 124 USPQ2d

1327 (TTAB 2017), although neither Applicant nor the Examining Attorney cited that

decision. Here, as in Olin, Applicant submitted arguments and evidence that its mark

has acquired distinctiveness pursuant to Trademark Act Section 2(f), 15 U.S.C.

§ 1052(f), but never explicitly requested registration under Section 2(f). Id., 124

USPQ2d at 1329. In Olin, the Examining Attorney construed the applicant’s

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Serial No. 86881376

arguments as an apparent claim of acquired distinctiveness in the alternative. Id. at

1329-30. In this case, the Examining Attorney addressed Applicant’s arguments but

also advised Applicant during examination of the correct procedure for claiming

acquired distinctiveness as to a portion of the mark: “If applicant believes that a

portion of the mark has acquired distinctiveness, applicant may amend the

application to add a claim of acquired distinctiveness as to that portion under

Trademark Act Section 2(f).”12 Applicant, however, never amended its application to

assert a Section 2(f) claim, in whole or in part, and did not claim Section 2(f) in the

alternative. We analyze Applicant’s arguments nonetheless.

An applicant can establish a prima facie case of acquired distinctiveness in a mark

in an intent-to-use application by showing that same mark acquired distinctiveness

for sufficiently similar or related services, and that this acquired distinctiveness will

transfer to the services specified in the application when the mark is used in

connection with them. There are three methods for satisfying the first element of the

test, that is, establishing that a mark has acquired distinctiveness for services

sufficiently similar or related to those identified in the intent-to-use application:

(1) Ownership of prior registration(s) of the same mark.

(2) Five years of substantially exclusive and continuous use
in commerce.

(3) Other appropriate evidence of distinctiveness showing
the duration, extent, and nature of the use in commerce
and advertising expenditures, and verified statements,
letters or statements from the trade or public, or other
appropriate evidence of distinctiveness.

12 March 27, 2018 Final Office Action at TSDR 218.

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Serial No. 86881376

See Trademark Rule 2.41(a), 37 C.F.R. § 2.41(a). We address each option in turn.

First, Applicant does not allege ownership of a prior registration. With respect to

the second means of proving distinctiveness, Applicant submitted the declaration of

its president and chief executive officer, Stephen T.B. Miller, averring to facts

concerning Applicant’s use of the mark CANDLER.13 The declaration, however, did

not allege that Applicant’s use of that term has been substantially exclusive – once

again, just as in Olin, 124 USPQ2d at 1337. Applicant therefore failed to satisfy the

essential statutory requirements of Trademark Act Section 2(f).

Last, we discuss the third method of establishing distinctiveness. Through

appropriate evidence, an applicant may claim acquired distinctiveness in part for

marks comprising a surname combined with generic wording when the applicant can

show acquired distinctiveness only as to the surname. See Trademark Manual of

Examining Procedure (TMEP) § 1212.02(f)(ii)(A) (Oct. 2018). Although Applicant did

not specifically assert a claim of acquired distinctiveness in part, as noted supra, we

address the arguments in its brief that it intended to proceed in this manner, that is,

by making a Section 2(f) claim in part as to CANDLER.

13 Recon. Request, TSDR 230.

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Serial No. 86881376

While the Candler Building is listed in the National Register of Historic Places14

and Applicant submitted evidence referring to it as “iconic”15 and a “landmark,”16

such references are found only in the local or specialty media or in what appear to be

news releases from Applicant.17 The evidence is insufficient to establish that the

purchasing public has come to associate CANDLER with office building services. As

the Examining Attorney correctly notes in his brief, 9 TTABVUE 6, because

Applicant’s rights would be nationwide in effect, we must consider the significance of

CANDLER to potential consumers of office building and hotel services across the

United States, not just those in Atlanta. See Trademark Act Section 7(b), 15 U.S.C.

§ 1057(b).

In sum, Applicant has failed to satisfy the first required element for proving

secondary meaning in an intent-to-use application by establishing that CANDLER

has become distinctive for any services, including for office building services.

14 Petition to Revive, Exhibits D and F, TSDR 70-72, 80-87.
15Petition to Revive, Exhibit B, TSDR 63-66 and Recon. Request, TSDR 249-56 (same article
from Atlanta Journal-Constitution online); Petition to Revive, Exhibit C, TSDR 67-69
(hotelnewsresource. com); id. at Exhibit H, TSDR 91-95 (cpexecutive.com); Recon. Request,
TSDR 242-48 (whatnowatlanta.com), 264-67 (atlanta.curbed.com), 268 (atlantaintownpaper.
com).
16E.g., Petition to Revive, Exhibit E, TSDR 73-79 (City of Atlanta website, atlanta.gov);
Recon. Request, TSDR 269-73 (hotelmanagement.net).
17E.g., Recon. Request, TSDR 238-41 (press release from hotel-online.com); id. at TSDR 257-
63 (beckgroup.com and newsroom.hilton.com).

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Serial No. 86881376

III. Conclusion

We have found that Applicant’s mark is primarily merely a surname and that

Applicant neither amended its application to assert, nor succeeded in establishing,

that its mark has become distinctive of services sufficiently similar or related to those

identified in the intent-to-use application. We therefore affirm the refusal under

Section 2(e)(4) of the Trademark Act.

Decision: The refusal to register is affirmed.

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