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: 8/6/2015

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES that applicant must address:

 

• SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME
• IDENTIFICATION OF GOODS
• SUPPLEMENTAL REGISTER ADVISORY

 

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. The primary significance of the mark to the purchasing public determines whether a term is primarily merely a surname. In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009); see TMEP §§1211, 1211.01.

 

The following five factors are used to determine whether a mark is primarily merelya surname:

 

(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.

 

See In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009); In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995); TMEP §1211.01.

 

There is no rule as to the kind or amount of evidence necessary to make out a prima facie showing that a term is primarily merely a surname. This question must be resolved on a case-by-case basis. TMEP §1211.02(a); see, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., 230 USPQ 79 (TTAB 1986). The entire record is examined to determine the surname significance of a term. The following are examples of evidence that is generally considered to be relevant: telephone directory listings, excerpted articles from computerized research databases, evidence in the record that the term is a surname, the manner of use on specimens, dictionary definitions of the term and evidence from dictionaries showing no definition of the term. TMEP §1211.02(a).

 

Rarity of the Surname

 

The search results of a surname search for SAUNDERS in LexisNexis are attached to this Office action which show over 3,000 hits for the surname SAUNDERS in a nationwide public records search.

 

Material obtained from computerized text-search databases, such as LexisNexis®, is generally accepted as competent evidence. See In re The Boulevard Entm’t, Inc., 334 F.3d 1336, 1342-43, 67 USPQ2d 1475, 1479 (Fed. Cir. 2003) (accepting LexisNexis® evidence to show offensive nature of a term); In re Giger, 78 USPQ2d 1405, 1407 (TTAB 2006) (accepting LexisNexis® evidence to show surname significance); In re Lamb-Weston Inc., 54 USPQ2d 1190, 1192 (TTAB 2000) (accepting LexisNexis® evidence to show descriptiveness); In re Wada, 48 USPQ2d 1689, 1690 (TTAB 1998) (accepting LexisNexis® evidence to show geographic location is well-known for particular goods); In re Decombe, 9 USPQ2d 1812, 1815 (TTAB 1988) (accepting LexisNexis® evidence to show relatedness of goods in a likelihood of confusion determination); TBMP §1208.01; TMEP §710.01(a)-(b). Here, the search results from the LexisNexis public records search show that the surname SAUNDERS is not rare.

 

 

 

Surname Connection with Applicant - INQUIRY

 

The fact that a term is the surname of an individual associated with the applicant (e.g., an officer or founder) is evidence of the surname significance of the term. TMEP §1211.02(b)(iv); see, e.g., In re Cazes, 21 USPQ2d 1796, 1796-97 (TTAB 1991) (holding BRASSERIE LIPP primarily merely a surname where “Lipp” was the surname of the restaurant’s founder and the term “brasserie” (translated as “brewery”) was found merely descriptive and disclaimed); In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985); Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615, 1620-21 (TTAB 2013); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314, 1315 (TTAB 1990); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988); In re Taverniti, SARL, 225 USPQ 1263, 1264 (TTAB 1985), recon. denied, 228 USPQ 975 (TTAB 1985).

 

Applicant must state whether the surname SAUNDERS has any connection with the applicant.

 

Recognized Meaning Other Than as a Surname

 

A mark’s primary surname significance is generally retained unless the non-surname significance displaces the primary surname significance of that mark. See In re Petrin Corp., 231 USPQ 902, 904 (TTAB 1986) (holding PETRIN primarily merely a surname despite applicant’s argument that the mark represents an abbreviated contraction of “petroleum” and “insulation”); TMEP §1211.01(a)(ii); see also In re Etablissements Darty et Fils, 759 F.2d 15, 18, 225 USPQ 652, 653-54 (Fed. Cir. 1985) (holding DARTY primarily merely a surname despite applicant’s argument that the mark is a play on the word “dart”). 

 

Evidence that a word has no meaning or significance other than as a surname is relevant to determining whether the word would be perceived as primarily merely a surname. See In re Petrin Corp., 231 USPQ 902, 903 (TTAB 1986); TMEP §1211.02(b)(vi).  Here, the attached search results for SAUNDERS from www.onelook.com, an online dictionary search website do not display results in any of the dictionaries indexed by the website that show a meaning or significance other than as a surname.

 

Structure and Pronunciation of a Surname

 

The fact that a term looks and sounds like a surname may contribute to a finding that the primary significance of the term is that of a surname. In re Giger, 78 USPQ2d 1405, 1409 (TTAB 2006); In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988); In re Petrin Corp., 231 USPQ 902, 904 (TTAB 1986); see TMEP §1211.01(a)(vi).  The Courts and the Trademark Trial and Appeal Board will look to the following in determining whether a term or designation has the structure and pronunciation, or “look and feel” of a surname. First, whether there are numerous individuals with the surname in question. This has been shown here by the numerous entries returned in the LexisNexis results. Secondly, whether the designation has no other known significance. See Gregory, supra 70 USPQ2d at 1796 (“We conclude that ROGAN has the look and sound of a surname. It would not be perceived as an initialism or acronym, and does not have the appearance of having been coined by combining a root element that has a readily understood meaning in its own right with either a prefix or a suffix. Rather, ROGAN appears to be a cohesive term with no meaning other than as a surname”). Again, this has been conclusively shown by lack of listings in dictionaries. Furthermore, SAUNDERS, like ROGAN, would not be perceived as an initialism or acronym, nor does it have the look or appearance of having been “coined by combining a root element that has a readily understood meaning it its own right” with either a prefix or suffix.”

 

Stylization of the Term

 

Adding a non-distinctive design element or letter stylization to a term that is primarily merely a surname does not change the surname significance of the term. The primary significance of such a mark would still be that of a surname. TMEP §1211.01(b)(ii); see In re Pickett Hotel Co., 229 USPQ 760, 763 (TTAB 1986) (holding PICKETT a surname despite use of stylized lettering); cf. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995).  Here, the applicant has applied for a standard character mark and thus has not claimed any stylization or design elements.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

IDENTIFICATION OF GOODS

 

The wording “electric fixtures” in the identification of goods is indefinite and must be clarified to identify the type of fixtures provided by applicant.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate: 

 

“Outdoor lighting, namely, lights for decks, walkways, patios, landscapes, umbrellas, and decorative electric lighting fixtures, torches and lanterns.”

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

 

SUPPLEMENTAL REGISTER ADVISORY

 

The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s). TMEP §816.04.

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed. 37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03. When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

 

To amend the application filing basis from an intent-to-use application under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a), applicant must file, prior to approval of the mark for publication, an amendment to allege use that satisfies the requirements of 37 C.F.R. §2.76. See 15 U.S.C. §1051(c); 37 C.F.R. §2.35(b)(8); TMEP §§806.01(b), 1103.

 

The following must be submitted in an amendment to allege use in order to amend an application to use in commerce under Section 1(a):

 

(1)       The following statement: “Applicant is believed to be the owner of the mark and that the mark is in use in commerce.”

 

(2)       The date of first use of the mark anywhere on or in connection with the goods and/or services.

 

(3)       The date of first use of the mark in commerce as a trademark or service mark.

 

(4)       A specimen showing actual use of the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.

 

(5)       A filing fee of $100 per class for each international class of goods and/or services for which use is being asserted (current fee information should be confirmed at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

(6)       Verification of the above (1) through (3) requirements in an affidavit or signed declaration under 37 C.F.R. §2.20.

 

See 37 C.F.R. §§2.6(a)(2), 2.56, 2.76(b), 2.193(e)(1); TMEP §§1104.08, 1104.10(b)(v).

 

Amendments to allege use can be filed online at http://www.gov.uspto.report/trademarks/teas/index.jsp. Filing an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action. TMEP §1104.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

                               

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.

 

RESPONSE TO OFFICE ACTION

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

 

 

/Justin Severson/

Examining Attorney

Law Office 111

571-272-6893

justin.severson@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 8/6/2015 FOR U.S. APPLICATION SERIAL NO. 86631088

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 8/6/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.