"A rose by any other word would smell as sweet," says Shakespeare's Juliet to her Romeo. His surname is that of her family's rivals, the Montagues. But that, she proclaims, has no bearing on her love.

Merely a surname, Juliet might say, if she'd read the Lanham Act.

Under that Act, an effective but infrequently relied upon ground for opposing a trademark application is that the applied-for mark is primarily merely a surname. And the word "primarily" is important. It was added to the existing statutory language of the Act, which had included "merely" with the intent to exclude registration of names such as Johnson or Jones, but not to exclude registration of surnames such as Cotton or King. These latter two have primary significance other than as a surname.

Whether a term is primarily merely a surname depends on its primary significance to the purchasing public. In determining this, the Trademark Trial and Appeal Board (TTAB) considers five factors: whether the surname is rare, whether the term is the surname of anyone connected with the applicant, whether it has any recognized meaning other than as a surname, whether it has the "look and feel" of a surname, and whether the stylization of lettering of the term is distinctive enough to create a separate commercial impression.

In its precedential ruling earlier this year in Ayoub, Inc. and Ayoub Supply LLCv. ACS Ayoub Carpet Service, Opposition No. 91211014 (March 31, 2016), the TTAB sustained a rare "primarily merely a surname" opposition to registration of the mark Ayoub for "retail carpeting and rug stores" and "carpet and rug cleaning services." The Board held that the applicant failed to satisfy the requirements that its mark had acquired distinctiveness and that its use of its mark was "substantially exclusive."

On the question of whether a mark has in fact acquired distinctiveness, the applicant bears the ultimate burden of persuasion. ACS Ayoub Carpet Service's application to register the mark Ayoub was initially rejected on the basis that it was primarily merely a surname. ACS eventually won approval based on its amended application, which claimed that its mark had acquired distinctiveness through "substantially exclusive and continuous use" for at least the immediately preceding five years.

Ayoub, Inc. and Ayoub Supply — if not adversaries in the courtyards of Verona, at least ACS's rivals in the courtroom—then opposed the registration of the mark on the ground that it was merely a surname that had not acquired distinctiveness. The opposers argued that they and various third parties used the Ayoub surname for identical or related services, noting that their own use of the surname from 1996 to 2015 was not insubstantial.

The Board felt that the opposers successfully established evidence of the use of Ayoub by third parties in the same or similar businesses as the applicant.

One can't help but wonder whether the applicant's own website led to its application's demise. It stated:

"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."

Thus, the applicant admitted that its use of Ayoub was not substantially exclusive.

In its defense, the applicant did provide substantiated evidence that it had objected on at least five separate occasions to the use of Ayoub by the opposers and other third parties. However, all of those entities used the mark during the same five-year timeframe for which the applicant claimed exclusive use of it. Making matters worse, all but one of the users continued to use the mark after the applicant's objections.

Therefore, the Board concluded that the public had been exposed to many uses of the name Ayoub in connection with carpet and rug cleaning, and repair businesses.

The Board explained that "absolute exclusivity" was not required to satisfy an applicant's claim that its mark had acquired distinctiveness. Nonetheless, it still felt that the widespread use of the surname by unaffiliated rug, carpet, and flooring businesses was inconsistent with the applicant's claim of acquired distinctiveness, and that the applicant's use of the mark could not be considered substantially exclusive.

Concluding that the applicant failed to establish acquired distinctiveness, the Board sustained the opposition and refused to register the applicant's mark.

In Romeo and Juliet, of course, the feuding families reconcile. I don't know what became of the Ayoubs, but since the drama has ended, I do have some takeaways from their story at the TTAB.

First, the case demonstrates the potential viability of the infrequently used "primarily merely a surname" ground for bringing an opposition: Would-be opposers should consider it when determining opposition strategies.

Perhaps more importantly, the case focuses our attention on what it takes to prove acquired distinctiveness, and demonstrates how the Board is still going to require no more than minimal third-party use, even without requiring absolute exclusivity.

Finally, the Board's ruling sends a strong message about corporate counsel's firing off cease-and-desist letters when they haven't an explicit intent to follow up. As a counselor in trademark matters, it is not rare to field a client request to send such a letter; but I often advise them that if they're not willing to follow up on the letter's demands, including to the point of filing infringement litigation, such letters can have a deleterious effect — even if the client thinks their opponent weak and their own case strong.

Why so? Because sending demand letters without following up creates a record that can later be used against the claimant, such as in an opposition proceeding where the claimant is arguing that it has acquired distinctiveness in its mark. In such instances, third-party uses that the client launched an objection to but then did not pursue can be used as evidence against such a claim.

Reprinted with permission from the July 28, 2016 edition of Inside Counsel© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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