The USPTO refused to register the mark MAGNUS for "whiskey, gin and distilled spirits," finding the mark to be primarily merely a surname under Section 2(e)(4). Examining Attorney Kevin G. Crennan relied on search results showing thousands of individuals with the surname MAGNUS, and on evidence of applicant's promotion of its connection to Joseph Magnus, an historical distiller. Applicant pointed to twelve existing registrations for the word MAGNUS that were not refused registration under Section 2(e)(4). How do you think this came out? In re Jos. A. Magnus & Co., LLC, Serial No. 87618554 (January 15, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington).
Results from three searches turned up several thousand individuals with the surname MAGNUS. The Board found that this evidence "shows that the relevant public has some exposure to MAGNUS as a surname."
Applicant argued that Joseph Magnus is a "past figure" and not a founder of the company, and that no person named MAGNUS is or has been involved in the business. The Board was unmoved:
We find it significant that Applicant has made and continues to prominently make a connection with a person having the surname MAGNUS. Applicant touts this connection directly in its communications with relevant consumers. Applicant's actions and the actual name of its company clearly reinforce the surname significance of MAGNUS .
The Board found "no meaningful difference between Applicant's promotion of a connection with a person having the surname MAGNUS and other cases where we held that a party's promotion of its founder having the surname as establishing public exposure to that surname."
Moreover, there was no evidence that Joseph Magnus had any notoriety with consumers (other than possibly through Applicant's promotion), let alone the level of fame that has been found to overcome surname refusals in "historical figure" cases (e.g., SOUSA and DAVINCI).
As to non-surname meanings of MAGNUS, the Examining Attorney maintained that "magnus" has no recognized meaning other than as a surname. Applicant pointed to the Latin word "magnus," which means "great" in English. The Board, however, saw no evidence that this meaning "is well-recognized or would pertain to distilled spirits."
Applicant submitted copies of twelve live, third-party registrations for the standard character mark MAGNUS in connection with various goods and services. The Examining Attorney argued the each application must be examined on its own merits, and there was no showing that any of these twelve cases included "a fact pattern that is similar and significant to the instant refusal, namely, the Applicant's use of MAGNUS as a surname on its website, in its marketing materials, and on its goods."
The Board agreed that each case must be decided on its own merits, and "without knowing more, or in fact anything, about the underlying facts and circumstances in those cases, we cannot say that the registrations demonstrate Office practice with respect to the surname significance of MAGNUS,"
Moreover, in this case, Applicant promotes a connection with an individual with the surname MAGNUS; the same may not have been true with the 12 third-party registrants. Without being privy to the prosecution records of those registration files, it is not possible to ascertain whether the examining attorneys determined that there was no connection between the registrants and individuals having the surname MAGNUS or if there was additional evidence that is not before us in this proceeding. In other words, the examining attorneys may have reached the determination that MAGNUS is not primarily merely a surname based on evidence not of record in this proceeding.
As to the structure and pronunciation of MAGNUS, the Board agreed with applicant that they may suggest a Latin word to some American consumers. However, the Board noted that this is "a fairly subjective matter and is certainly not conclusive that consumers encountering MAGNUS on Applicant's goods would not perceive the term as a surname." The Board deemed this factor neutral.
Conclusion: The Board found that consumers will perceive MAGNUS as a surname "because Applicant strongly promotes a connection between itself and an individual having the surname MAGNUS." "This, in itself, is highly persuasive that the public would perceive [the mark] as a surname." In re Weiss Watch, 123 USPQ2d at 1202, quoting Darty, 225 USPQ at 653
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