Hutchinson Technology Inc., In re

• Decision Date: 21 July 1988
• Docket Number: No. 88-1048,88-1048
• Parties: In re HUTCHINSON TECHNOLOGY INCORPORATED.
• Court: U.S. Court of Appeals — Federal Circuit

Page 552

852 F.2d 552

7 U.S.P.Q.2d 1490

In re HUTCHINSON TECHNOLOGY INCORPORATED.

No. 88-1048.

United States Court of Appeals, Federal Circuit.

July 21, 1988.

Scott Quin Vidas, Vidas and Arrett, P.A., Minneapolis, Minn., argued for appellant.

Nancy C. Slutter, Asst. Sol., Arlington, Va., argued for appellee. With her on the brief were Joseph F. Nakamura, Sol., and Fred E. McKelvey, Deputy Sol.

Before SMITH and BISSELL, Circuit Judges, and NICHOLS, Senior Circuit Judge.

EDWARD S. SMITH, Circuit Judge.

Hutchinson Technology Incorporated (Hutchinson) appeals the decision of the United States Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (board) refusing registration of HUTCHINSON TECHNOLOGY as a trademark. The board's decision is reversed.

I. Issue

The sole issue on appeal is whether the board erred in refusing to register on the principal register the mark HUTCHINSON TECHNOLOGY because the mark is primarily merely a surname under section 2(e)(3) of the Lanham Act. ¹

II. Background

Hutchinson filed an application to register HUTCHINSON TECHNOLOGY as a trademark for: ²

etched metal electronic components; flexible circuits; actuator bands for disk drives; print bands; increment discs; [and] flexible assemblies for disk drives * * * [.]

The examiner refused registration of the mark under section 2(e)(3) of the Lanham Act. As grounds for his refusal, the examiner, citing pages from the 1984 Northern Virginia and 1985 Maryland Suburban telephone directories (both areas fall within the Washington, D.C., metropolitan area) listing over 200 individuals with the surname "Hutchinson," found that the term "Hutchinson" was a surname. The examiner also found that "technology" was merely descriptive of the goods involved and added nothing to the registrability of the mark.

After Hutchinson responded to the examiner's initial refusal to register its mark, the application was finally rejected by the examiner. The examiner, in the final rejection, concluded that the evidence on record supported the finding that "Hutchinson" was a surname. According to the examiner, Hutchinson's evidence that the company was located in the town of Hutchinson, Minnesota, was insufficient to show that the mark was not primarily merely a surname. In response to Hutchinson's argument that the examiner had improperly dissected the mark in considering the registrability of the mark as a whole, the examiner, citing In re Pickett Hotel Co. ³ and In re E. Martinoni Co., ⁴ stated that he was not ignoring the presence of the word "technology" in the mark, but that the combination of a surname and a term which is "highly descriptive or generic" of the goods did not alter the primary significance of the mark as a surname.

On appeal, the board, distinguishing Martinoni, recognized that "technology" is not the common descriptive or generic name for Hutchinson's product. However, the board affirmed the examiner's refusal to register the mark because it found that the term "technology" is commonly used in connection with goods similar to those listed in Hutchinson's application. The board determined that the inclusion of that term in the mark did not remove the surname significance of "Hutchinson" or create the impression that HUTCHINSON TECHNOLOGY was not primarily merely a surname. ⁵

III. Analysis

It is clear that the PTO has the initial burden of going forward in establishing that an applicant's mark is primarily merely a surname. ⁶ Only after the PTO has presented a prima facie case that a mark is primarily merely a surname will the burden switch to the applicant to rebut this finding. Hutchinson argues that the PTO failed to establish a prima facie case that HUTCHINSON TECHNOLOGY is primarily merely a surname. We agree.

The test for determining whether a mark is primarily merely a surname is the primary significance of the mark as a whole to the purchasing public. ⁷

A trademark is a trademark only if it is used in trade. When it is used in trade it must have some impact upon the purchasing public, and it 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. [Emphasis in original.] ⁸

Here, the board failed to establish a prima facie case that HUTCHINSON TECHNOLOGY is primarily merely a surname. It made two errors in its analysis. First, contrary to the board's consideration of Hutchinson's mark, a mark sought to be registered must be considered in its entirety. ⁹ The board considered the mark as two separate parts, "Hutchinson" and "technology," and analyzed the registrability of each word separately. With respect to the term "Hutchinson," the board found that "Hutchinson" was primarily merely a surname. The evidence of many telephone listings, combined with the lack of a dictionary definition giving some other meaning for the word, established a prima facie case that "Hutchinson" is primarily merely a surname. With respect to the term "technology," the board solely relied on Hutchinson's concession that "technology" is used on many goods similar to those listed in Hutchinson's application to find that its inclusion in the mark as a whole did not remove the surname significance of "Hutchinson." However, the fatal flaw in the board's analysis is that the mark sought to be registered is not HUTCHINSON or TECHNOLOGY, but HUTCHINSON TECHNOLOGY. The board never considered what the purchasing public would think when confronted with the mark as a whole.

Second, the board's findings on the effect of the inclusion of "technology" in the mark as a whole are not supported by the facts upon which the board relies. The board recognized that the term "technology" is not the common descriptive or generic name of the goods listed in Hutchinson's application, but relied on Hutchinson's concession that the term was commonly used in connection with similar goods to support its finding that the inclusion of "technology" in the mark as a whole did not alter the surname significance of "Hutchinson" or create the impression that HUTCHINSON TECHNOLOGY was not primarily merely a surname. Hutchinson's concession, relied upon by the board, does not support this finding.

The key to the board's decision is its reliance on Hutchinson's concession that "technology" is used on many goods similar to those listed in Hutchinson's application. However, the fact that the term "technology" is used in connection with computer products does not mean that the term is descriptive of them. Many other goods possibly may be included within the broad term "technology," but that does not make the term descriptive of all of those goods. At most, all that may be concluded from Hutchinson's concession is that a mark including the term "technology," which mark is used on computer products, is a weak mark for those goods.

Moreover, interpreting the board's statement that there was "conceded common usage of 'technology' in connection with goods of this type" as the equivalent of a finding that the term "technology" is "merely descriptive" of the goods listed in Hutchinson's application, we hold that the board clearly erred by finding that the term "technology" is merely descriptive of Hutchinson's goods. "A mark is 'merely descriptive' [of a product] if it 'would immediately convey to one seeing or hearing it the thought of appellant's [product].' " ¹⁰ As Hutchinson points out, "technology" is a very broad term which includes many categories of goods. The term "technology" does not convey an immediate idea of the "ingredients, qualities, or characteristics of the goods" listed in Hutchinson's application. ¹¹ Therefore, the term "technology" is not "merely descriptive" of Hutchinson's goods, and we conclude that the board's finding that the term "technology," standing alone, is merely descriptive of Hutchinson's goods is clearly erroneous. The board offered no other evidence to support its findings on the effect of the inclusion of "technology" in Hutchinson's mark as a whole. Consequently, the board's findings on the effect of the inclusion of "technology" in the mark, as a whole, also are clearly erroneous.

The board cited In re I. Lewis Cigar Manufacturing Co. ¹² in support of its decision. In Lewis Cigar, the mark was S. SEIDENBERG & CO'S. The United States Court of Customs and Patent Appeals determined that the addition to the surname "Seidenberg" both of the single initial "S." and of the term " & Co's" did not remove the mark as a whole from the status of being primarily merely a surname. HUTCHINSON TECHNOLOGY is in no way similar to the mark in Lewis Cigar, and that case offers no support for the position taken by the board in this case.

IV. Conclusion

In view of the foregoing, the decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board denying registration on the principal register for the mark HUTCHINSON TECHNOLOGY is reversed. The case is remanded to the board to give Hutchinson time to file the required disclaimer.

REVERSED AND REMANDED.

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. Sec. 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...