UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 9/19/2011

 

This Office action is in response to applicant’s communication filed on August 29, 2011.  Please be advised that the likelihood of confusion refusal is now WITHDRAWN.  However, the surname refusal is CONTINUED and incorporated herein by reference.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211.  However, the applicant’s distinctiveness claim now raises the following new issue.

 

INSUFFICIENT EVIDENCE OF ACQUIRED DISTINCTIVENESS

 

An intent-to-use applicant who has used the same mark on related goods and/or services may file a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545, 1547 (TTAB 2010); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).

 

The Trademark Trial and Appeal Board has set forth the requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

 

(1)        Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of a prior registration for the same mark for related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and

 

(2)        Applicant must show the extent to which the goods and/or services recited in the intent-to-use application are related to the goods and/or services in connection with which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use.  The showing necessary to establish relatedness will be decided on a case by case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.

 

See Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1771 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999); TMEP §1212.09(a).

 

In support of its claim, the applicant asserts that provided survey evidence and sales figures establish distinctiveness in this case.  However, this evidence is insufficient.

 

The burden of proving that a mark has acquired distinctiveness is on the applicant.  Yamaha Int’l Corp. v. Yoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959); TMEP §1212.01.  An applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin.

 

The ultimate test in determining acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source.  TMEP §1212.06(b); see In re Packaging Specialists,221 USPQ at 920; In re Redken Labs., Inc., 170 USPQ 526 (TTAB 1971).

 

Here, the applicant has not demonstrated distinctiveness in this case because none of the evidence appears to be for the same mark.  The evidence shows that the mark in the relied upon evidence is for a textbook that does not bear the mark in this case. 

 

In applicant’s February 1, 2011 response, the applicant demonstrates the textbook in question is titled “REMINGTON: THE SCIENE AND PRACTIVE OF PHARMANCY.” However,  the mark in this case is simply “REMINGTON.”  Please see the Background Section in the applicant’s February 1, 2011 response and Pages 2 and 9 of the attachments in Exhibit 1.  Moreover, on pages 11 and 12 of the applicant’s August 29, 2011 response, the applicant summarizes the survey evidence as being based upon this text.  Please see 11 and 12 of the 97 page response filed August 29, 2011.  In addition, the applicant has provided survey whereby consumers were questioned about the textbook, which again bears a different mark.

 

Although the survey truncates the book to the mark in question, here, the survey evidence only shows that particular respondents recognize a particular publication and not necessarily the source.   To show secondary meaning with survey evidence, the applicant must show the public views the proposed mark as an indication of the source of the product or services,  and must document the procedural and statistical accuracy of the evidence which.  TMEP §1212.06(d).  Here, the survey evidence merely establishes that some consumers have used and/or purchased a particular textbook entitled “Remington: The Science and Practice of Pharmacy.” Moreover, the survey represented a very small sampling of less than 500 respondents, appears to have asked the wrong questions, did not appear to use a representative sample of consumers, and used leading questions..

 

In addition, it is noted that applicant provided evidence of sales figures for the some goods at issue; however, but such evidence is not dispositive of whether the proposed mark has acquired distinctiveness.  Evidence of extensive sales and promotion may demonstrate the commercial success of applicant’s goods and/or services, but not that relevant consumers view the matter as a mark for such goods and/or services.  See In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); In re Busch Entm’t Corp., 60 USPQ2d 1130, 1134 (TTAB 2000).  Moreover, the provide evidence appears to be for a different mark as the textbook from which the figures were derived is entitled “REMINGTON: THE SCIENCE AND PRACTIVE OF PHARMACY.”

 

CLOSING

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

/IngridCEulin/

Ingrid C. Eulin

Law Office 111

(571) 272-9380

Ingrid.Eulin@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 9/19/2011 FOR

SERIAL NO. 85056557

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 9/19/2011 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.