United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79284256
Mark: LAVAZZA
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Correspondence Address:
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Applicant: LUIGI LAVAZZA S.p.A.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1527522
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME
Registration is refused because the applied-for mark is primarily merely a surname. Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211.
An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods and services, “‘is the primary significance of the mark as a whole to the purchasing public.’” Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.
The following five inquiries are often used to determine the public’s perception of a term’s primary significance:
(1) Whether the surname is rare;
(2) Whether anyone connected with applicant uses the term as a surname;
(3) Whether the term has any recognized meaning other than as a surname;
(4) Whether the term has the structure and pronunciation of a surname; and
(5) Whether the term is sufficiently stylized to remove its primary significance from that of a surname.
In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 & n.2, 1282-83 (TTAB 2016) (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995) for the Benthin inquiries/factors); TMEP §1211.01; see also In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985).
These inquiries are not exclusive, and any of these circumstances – singly or in combination – and any other relevant circumstances may be considered when making this determination. In re Eximius Coffee, LLC, 120 USPQ2d at 1277-78; TMEP §1211.01. For example, when the applied-for mark is not stylized, it is unnecessary to consider the fifth inquiry. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); TMEP §1211.01.
In addition, the attached evidence from applicant’s website establishes the surname significance of LAVAZZA by showing that it is the surname of the founder of applicant’s company. A term appearing on an applicant’s own website in a manner that confirms the term’s surname significance is probative evidence on the issue of that term’s primary significance. See In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-80 (TTAB 2016) (holding ALDECOA primarily merely a surname where applicant’s website explains the Aldecoa family history in coffee for three generations and notes that the current generation of coffee brewers shares the same surname); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (holding BARR GROUP primarily merely a surname where applicant’s website promotes its association with Mr. Michael Barr and his credentials and accomplishments as an active participant in applicant’s activities under the mark).
Conclusion
In light of the elements of the mark, the attached evidence, and application of the relevant case law, it is clear that the mark LAVAZZA would be perceived as primarily merely a surname. Accordingly, registration is refused under Section 2(e)(4) of the Trademark Act.
SECTION 2(f) ADVISORY
(1) Prior Registrations: Applicant may claim ownership of one or more active prior registrations on the Principal Register of the same mark for goods and services that are sufficiently similar to those named in the pending application. 37 C.F.R. §2.41; TMEP §§1212, 1212.04. Applicant may do so by submitting the following statement, if accurate: “The mark has become distinctive of the goods and services as evidenced by the ownership of active U.S. Registration No(s). 5603887; 4810718; 3639696 on the Principal Register for the same mark for sufficiently similar goods and/or services.” TMEP §1212.04(e).
(2) Five Years’ Use: Applicant may submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The mark has become distinctive of the goods and services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.” 37 C.F.R. §2.41; TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
(3) Other Evidence: Applicant may submit other evidence of acquired distinctiveness (such as verified statements of long term use, advertising and sales expenditures, examples of advertising, affidavits and declarations of consumers, customer surveys), with the following statement, if accurate: “The evidence shows that the mark has become distinctive of the goods and services.” See 37 C.F.R. §2.41; TMEP §§1212.06 et seq. When determining whether the evidence shows the mark has acquired distinctiveness, the trademark examining attorney will consider the following six factors: (1) association of the mark with a particular source by actual purchasers (typically measured by customer surveys linking the name to the source); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage. See Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (“the Converse factors”). “[N]o single factor is determinative.” In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. Rather, all factors are weighed together in light of all the circumstances to determine whether the mark has acquired distinctiveness. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424.
IDENTIFICATION OF GOODS
The wording “appliances for water distribution [automatic]; water distribution installations; water supply installations” in the identification of goods for International Class 11 must be clarified to specify the nature of the appliances and installations because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Additionally, the wording “coffee flavourings” and “mixtures of coffee” in International Class 30 is indefinite and must be clarified to specify the nature of the flavorings and the content of the mixtures.
Further, the wording “barley for use as a coffee substitute” in the identification of goods for International Class 30 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass unprocessed barley in International Class 31.
Finally, the identification of goods contains brackets. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
Applicant may adopt the following wording, if accurate:
International Class 11: Electric ranges; coffee percolators, electric; electric coffee makers for household use; coffee roasters; kettles, electric; automatic water fountains; water faucet spout; tap water faucets; water heaters; water purifying apparatus and machines; beverage cooling apparatus; heating and cooling apparatus for dispensing hot and cold beverages.
International Class 30: Coffee; decaffeinated coffee; unroasted coffee; artificial coffee; coffee extracts; coffee-based beverages; coffee essences; coffee beverages with milk; cocoa-based beverages; chocolate-based beverages; mixtures of coffee and chicory; freeze-dried coffee; processed barley for use as a coffee substitute; coffee capsules, filled.
International Class 43: acceptable as filed
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MARK DESCRIPTION REQUIRED
To clarify how white is being used in the mark, applicant may satisfy one of the following:
(1) If white is a feature of the mark, applicant must amend the color claim to include it and amend the description to identify where white appears in the literal and design elements of the mark. The following color claim and description are suggested, if accurate:
Color claim: “The colors blue and white are claimed as a feature of the mark.”
Description: “The mark consists of the wording LAVAZZA in white, stylized font at the top of a blue design in the shape of a paint brush stroke that appears on a white background.”
(2) If white is not a feature of the mark, applicant must amend the description to state that white represents background, outlining, shading and/or transparent areas and are not part of the mark. The following description is suggested, if accurate:
“The mark consists of the wording LAVAZZA in stylized font at the top of a blue design that is in the shape of a paint brush stroke. The color white represents outlining and is not claimed as a feature of the mark.”
TMEP §807.07(d).
U.S. COUNSEL REQUIRED
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Smith, Taryn
/Taryn Smith/
Examining Attorney
Law Office 104
571-270-0245
taryn.smith@uspto.gov
RESPONSE GUIDANCE