## Facts

- A jewelry manufacturer applied to register the word mark **DUCHARME** on the Principal Register for **watches**.
- The examining attorney refused registration under **Lanham Act § 2(e)(3)** on the ground that DUCHARME is **primarily merely a surname**.
- The refusal relied largely on **telephone directory listings** showing “Ducharme” used as a surname and the applicant’s concession that it is a surname.
- The Trademark Trial and Appeal Board affirmed, stating § 2(e)(3) makes no distinction between **rare** and **common** surnames.
- The applicant appealed the refusal to the Court of Customs and Patent Appeals.

## Issues

1. Whether the PTO met its burden to prove that **DUCHARME**, for watches, is **primarily merely a surname** under Lanham Act § 2(e)(3).
2. Whether telephone directory listings and an admission that a term is a surname are sufficient to establish a **prima facie** case that the term’s **primary significance to the purchasing public** is as a surname.

## Decision

- The court **reversed** the Board’s decision and set aside the refusal to register.
- The court held the PTO **failed to establish a prima facie case** that DUCHARME’s **primary significance to purchasers** of watches is that of a surname.
- The court required analysis focused on **consumer perception**, not the mere fact that a term can function as a surname.
- On this record, directory evidence and the term’s surname status, without more, were **insufficient** to support refusal under § 2(e)(3).

## Legal Principles

- A mark is unregistrable under **Lanham Act § 2(e)(3)** only if it is **primarily merely a surname**.
- The **PTO bears the burden** to prove a term is primarily merely a surname and must make a **prima facie** showing before any rebuttal obligation arises.
- The correct inquiry is the **primary significance of the designation to the purchasing public** in connection with the identified goods.
- Evidence that a term appears as a surname in **telephone directories**, standing alone, may be inadequate to prove that consumers primarily perceive the term as a surname for the relevant goods.

## Conclusion

The court reversed the § 2(e)(3) refusal because the PTO’s limited evidence did not show that purchasers of watches would primarily perceive DUCHARME as a surname, rather than as a trademark.


In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831 (C.C.P.A. 1975)