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: 11/13/2015

 

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.

 

Summary of Issues:

 

• Refusal – mark is primarily merely a surname
• Response options for surname refusal
• Identification of services
• New drawing
• Request for additional information

 

NO CONFLICTING MARKS NOTED

 

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).

 

Registration is refused, however, for the following reason:

REFUSAL – MARK IS 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.

 

In this case, the applied-for mark is MAYFIELD.  As the attached evidence from rhymezon.com shows, “Mayfield” is a common surname.  In addition, the attached evidence from the Social Security Death index shows 11,247 hits.  Lastly, 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).  The attached evidence from Oxford dictionary shows that the word “mayfield” does not appear in the dictionary.  Thus, this word appears to have no meaning or significance other than as a surname. 

 

For the foregoing reasons, registration is refused pursuant to Section 2(e)4 of the Trademark Act.  Although registration has been refused, applicant may present arguments in response to the refusal.

 

RESPONSE OPTIONS FOR SURNAME REFUSAL

 

A mark deemed primarily merely a surname may be registered on the Principal Register under Trademark Act Section 2(f) by satisfying one of the following:

 

            (1) Submit a claim of ownership of one or more active prior registrations on the Principal Register for a mark that is the same as the mark in the application and for the same or related goods and/or services.  37 C.F.R. §2.41(a)(1); TMEP §§1212, 1212.04.  The following wording is suggested:  “The mark has become distinctive of the goods and/or services as evidenced by the ownership of active U.S. Registration No(s).  <insert Registration No(s).> on the Principal Register for the same mark for sufficiently similar goods and/or services.”  TMEP §1212.04(e).;

 

            (2) 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/or 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(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).; or

 

            (3) Submit actual evidence of acquired distinctiveness.  37 C.F.R. §2.41(a)(3); TMEP §1212.06.  Such evidence may include the following:  examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark and/or service mark in the United States; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the applied-for mark as a trademark and/or service mark; and any other evidence that establishes recognition of the applied-for mark as a source-identifier for the goods and/or services.  See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp. of Am., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.

 

Trademark Act Section 2(f), 15 U.S.C. §1052(f); see 37 C.F.R. §2.41; TMEP §§1211, 1212.

 

If applicant cannot satisfy one of the above, applicant can amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a).

 

How to submit a signed electronic declaration (see option 2 above):

Applicant may submit a declaration online using the Trademark Electronic Application System (TEAS) response to Office action form at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  In the TEAS response form, answer “yes” to the wizard question regarding submitting a “signed declaration,” and follow the instructions within the form for signing.  See 37 C.F.R. §§2.20, 2.33(a)-(b), 2.193(a)-(e)(1); TMEP §§611.01(c), 804.01(b).

 

IDENTIFICATION OF SERVICES – REQUIREMENT FOR CLASS 35

 

The identification of services in Class 35 reads as follows: business consultation; business acquisitions and merger consultation; business management consultation; business planning consultation; business organizational consultation; business operations consultation; business recruiting consultation; business marketing consultation business consultation services, namely, assessing entrepreneurial business plans; providing business information to entrepreneurs via electronic and mobile communications networks; arranging and conducting business conferences for business entrepreneurs; providing an Internet website portal offering information and multi-media content in the nature of articles, commentary to entrepreneurs, all in the field of business.

 

The identification of services is indefinite and must be clarified because the nature of some of the services is unclear. Specifically:

 

• business recruiting consultation – must clarify type of recruiting (e.g., employment recruiting)
• business marketing consultation business consultation services, namely, assessing entrepreneurial business plans – must insert punctuation between “business marketing consultation” and “business consultation services, namely, assessing entrepreneurial business plans” to separate the services
• providing an Internet website portal offering information and multi-media content in the nature of articles, commentary to entrepreneurs, all in the field of business – must specify how the articles and commentary are provided to clarify that applicant is providing services rather than goods such as downloadable articles

 

See TMEP §1402.01. 

 

Applicant may adopt the following identification in Class 35, if accurate: 

 

business consultation; business acquisitions and merger consultation; business management consultation; business planning consultation; business organizational consultation; business operations consultation; business employment recruiting consultation; business marketing consultation; business consultation services, namely, assessing entrepreneurial business plans; providing business information to entrepreneurs via electronic and mobile communications networks; arranging and conducting business conferences for business entrepreneurs; providing an Internet website portal offering information and multi-media content in the nature of links to articles and commentary to entrepreneurs, all in the field of business.

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

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

 

NEW DRAWING REQUIRED

 

Special form drawings should show the mark in black on a white background, unless the mark includes color.  In this case, the drawing is not acceptable because it shows the mark on a light gray background. Therefore, applicant must submit a new drawing featuring the mark on a white background.  37 C.F.R. §2.52(b); TMEP §807.04.

 

REQUEST FOR ADDITIONAL INFORMATION

 

Applicant must specify whether the wording “MAYFIELD” has any significance in the applicant’s trade or industry or as applied to the goods and/or services described in the application, or if such wording is a “term of art” within applicant’s industry.  In addition, applicant must respond to the following questions:

 

• Does “Mayfield” identify the surname of applicant’s founder or founders?
• Does “Mayfield” identify the surname of anyone connected to  applicant, including, but not limited to, corporate officers, founders, team members, board members, and the like?

 

See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

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. §§2.62(c), 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. 

 

 

 

/Melissa Vallillo/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 105

(571) 272-5891

melissa.vallillo@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 11/13/2015 FOR U.S. APPLICATION SERIAL NO. 86713569

 

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 11/13/2015 (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.