| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87670916 |
| LAW OFFICE ASSIGNED | LAW OFFICE 121 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87670916/mark.png |
| LITERAL ELEMENT | SCHRAFFT'S |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Argument
Applicant hereby responds to the Office Action issued on April 10, 2019, which is supplemental to and supersedes the previous Office Action issued on October 3, 2018 for the above-identified application. For the reasons discussed below, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register Applicant’s mark SCHRAFFT’S (“Applicant’s Mark”). I. Section 2(f) Acquired Distinctiveness Claim The Examining Attorney requested clarification on Applicant’s intent to claim acquired distinctiveness, and requested that Applicant either satisfy the requirements set out in TMEP §1212.09(a) or request that the Section 2(f) claim be deleted from the application. Applicant hereby requests that the Section 2(f) claim be deleted from the application; provided, however, that Applicant reserves the right to reassert such claim, if necessary. II. Refusal pursuant to Section 2(e)(4) The Examining Attorney has refused to register Applicant’s Mark on the ground that the mark is primarily merely a surname. Applicant respectfully requests reconsideration and withdrawal of the surname refusal because Applicant’s Mark has a primary significance other than merely as a surname and, on balance, the evidence of record is insufficient to establish that Applicant’s Mark is primarily merely a surname. The test for determining whether a mark is primarily merely a surname is the primary significance of the mark as a whole to the purchasing public. In re Hutchinson Tech., Inc., 852 F.2d 552, 554 (Fed. Cir. 1988). Thus, the impact that Applicant’s Mark has or would have on the purchasing public must be evaluated in determining whether the primary, and only, significance of Applicant’s Mark is as a surname. See In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016) (citing In re Harris-Intertype Corp., 518 F.2d 629 (CCPA 1975)); TMEP §1211.01. The Board has identified five key inquiries, each analyzed in turn below, that may lead to evidence regarding the public’s perception of a term’s primary significance: (1) whether the surname is rare; (2) whether it has the “structure and pronunciation” of a surname; (3) whether the term has any recognized meaning other than as a surname; (4) whether the term is the surname of anyone connected with the applicant; and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression. In re Eximius Coffee, 120 USPQ2d at 1278 (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333–1334 (TTAB 1995)). Where, as here, the applied-for mark is not stylized, it is not necessary to consider the fifth inquiry. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007). The evidentiary burden is initially on the Examining Attorney to establish a prima facie case that Applicant’s Mark is primarily merely a surname, after which the burden shifts to the Applicant to rebut this showing. See TMEP §1211.02(a). If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant. In re Yeley, 85 USPQ2d at 1151; In re Benthin, 37 USPQ2d at 1334; TMEP §1211.01. For the reasons set forth below, Applicant respectfully submits that, on balance, Applicant’s Mark has a primary significance other than merely as a surname, and the evidence of record is insufficient to establish a prima facie case that the primary—and only—significance of Applicant’s Mark to the purchasing public is merely as a surname. A. The term “Schrafft” is rarely used as a surname. Evidence that a term is rarely used as a surname supports a determination that its primary significance is not merely a surname. See In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994); In re Benthin, 37 USPQ2d at 1334; TMEP §1211.01(a)(v). The Examining Attorney submitted evidence from WhitePages and LEXISNEXIS showing “the applied-for mark appearing 72 and 32 times, respectively, in a surname in a nationwide phone directory of names and the LEXISNEXIS surname database.” Although the Examining Attorney acknowledged that the term “Schrafft” “appears to be a relatively rare surname,” the Examining Attorney also asserted that such evidence establishes the surname significance of the term “Schrafft.” Under Board precedent, however, the type and level of evidence submitted by the Examining Attorney is insufficient to support a surname refusal. For example, the Board reversed the Examining Attorney’s surname refusal of the mark SAVA finding that, based on evidence from the PHONEDISC database disclosing 100 listings for the term “Sava,” the term’s use as a surname was very rare in the United States. See In re Sava, 32 USPQ2d at 1381. Similarly, the Board found that evidence of approximately 100 United States surname listings showed that the term “Benthin” was a rare surname and a factor weighing against a finding that the term would be perceived primarily merely a surname. See In re Benthin, 37 USPQ2d at 1333. Here, as in Sava and Benthin, the evidence demonstrates that use of the term “Schrafft” as a surname is rare, as correctly acknowledged by the Examining Attorney. Thus, the rarity of the term “Schrafft” as a surname weighs in favor of a determination that the primary significance of Applicant’s Mark to the purchasing public is other than merely as a surname. B. Applicant’s Mark does not have the structure or pronunciation of a surname. Whether a term has the structure or pronunciation of a surname is a fairly subjective determination. The Board has stated, “certain rare surnames look like surnames and certain rare surnames do not.” See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) (finding “Pirelli” falls into the former category, while “Kodak” falls into the latter). For names in the latter category, even in the absence of non-surname significance, a reasonable application of the “primary significance to the purchasing public” test could result in a finding that the surname, when used as a mark, would be perceived as arbitrary or fanciful. See, e.g., In re United Distillers plc, 56 USPQ2d 1220, 1222 (TTAB 2000) (finding HACKLER does not have the look and feel of a surname); see also In re Joint-Stock Co. “Baik,” 84 USPQ2d 1921, 1923 (TTAB 2007) (finding lack of other recognized meaning does not in itself imbue a mark with the “look and feel” of a surname); see also TMEP §1211.01(a)(vi). In support of the assertion that Applicant’s Mark has the structure and pronunciation of a surname, the Examining Attorney submitted evidence comparing the term “Schrafft” with the term “Kraft.” Such comparison also requires the Examining Attorney “provide evidence to show that the public would be likely to perceive the mark as a surname due to the similar structure, such as evidence that the terms to which the mark is being compared are common surnames to which the public has been exposed.” In re Eximius Coffee, 120 USPQD2d at 1280; see also In re Bed & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017); TMEP §1211.01(a)(vi). “The mere sharing of a prefix, suffix or letter string does not result in the sort of structural similarity that is helpful to [the surname] analysis.” In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1724 (TTAB 2016) (further noting that arguments about surname structure and pronunciation “would require more objective evidence . . . of how members of the public would perceive the structure and sound of [the applied-for mark] and whether they would be likely to perceive it as similar to the structure and sound of other surnames, common words or coined terms”). Applicant submits that “Schrafft” is a rare surname (as discussed above) that, similar to “Pirelli” and HACKLER, does not have the structure, pronunciation, or “look and feel” of a surname. In addition, the Examining Attorney’s comparison of “Schrafft” to “Kraft” is improper because the terms lack the requisite structural similarity or pronunciation, which is not overcome by the fact that the terms rhyme or arguably share the differently spelled letter string “a[f]ft.” Moreover, the record does not include any objective evidence of how members of the public would perceive the structure and sound of Applicant’s Mark and whether they would be likely to perceive it as similar to the structure and sound of the term “Kraft.” This factor again weighs in favor of a determination that the primary significance of Applicant’s Mark to the purchasing public is other than merely as a surname. C. Applicant’s Mark primarily connotes a historical place. Evidence that a term has no recognized meaning other than as a surname is evidence of the surname significance of the term. See In re Eximius Coffee, 120 USPQ2d at 1280; TMEP §1211.01(a). In support of the assertion that the term “Schrafft” has no recognized meaning or significance other than as a surname, the Examining Attorney relies on evidence showing that term “Schrafft” is not found in a dictionary. But, a term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person. See, e.g., Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 331 (S.D.N.Y. 1970) (holding DA VINCA not primarily merely a surname because it primarily connotes Leonardo Da Vinci); In re Pyro-Spectaculars, Inc., 63 USPQ2d 2022, 2024 (TTAB 2002) (holding SOUSA not primarily merely a surname because of the present-day recognition and continuing fame of John Philip Sousa, a composer of patriotic music, and the likely association by potential purchasers of the term SOUSA with patriotic events and music when used in connection with fireworks”); see also TMEP §1211.01(a)(iv). In this case, Applicant’s mark is not primarily merely a surname because it primarily connotes the historical SCHRAFFT’S restaurants in New York City, which
enjoy present-day recognition and continuing fame for their role in U.S. history in launching mass-market menus and graciousness directed particularly to the female customer. See, e.g., Paul Freedman, D. The term “Schrafft” refers to the surname of the founder of a related business. As the Examining Attorney points out, evidence that a term is the surname of an individual associated with the applicant (e.g., an officer or founder) is another factor that is relevant to the determination whether the primary significance of a mark to the purchasing public is merely as a surname. See In re Etablissements Dary et Fils, 759 F.2d 15, 17 (Fed. Cir. 1985); TMEP §1211.02(b)(iv). Although no one associated with Applicant uses “Schrafft” as a surname, Applicant acknowledges that, on the evidence presented by the Examining Attorney, the term “Schrafft” in Applicant’s Mark derives from William F. Schrafft, who founded the related Boston-based candy business. Applicant respectfully submits that Frank G. Shattuck, however, is generally recognized as the founder of the SCHRAFFT’S restaurant chain, as is stated in the Wikipedia Article “Schrafft’s (restaurant chain)” submitted by the Examining Attorney in support of the Office Action, a copy of which is attached as Exhibit 3. See also “Success of Schraft [sic] Shopes Inspiration to Bakers,” Baker’s Helper (August 1, 1921) (contemporary article describing Shattuck as the founder of the Schraft’s [sic] restaurant chain), a copy of which is attached as Exhibit 4. While Applicant agrees that this factor, on balance, weighs in favor of surname significance, Applicable respectfully submits that this factor is relatively weak and outweighed by the other factors discussed and by the additional comments below. E. Remaining doubts should be resolved in favor of Applicant. If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant. In re Yeley, 85 USPQ2d at 1151; In re Benthin, 37 USPQ2d at 1334; TMEP §1211.01. At a minimum, the arguments above raise doubts as to whether Applicant’s Mark is primarily merely a surname, which provides a sufficient basis for the Examining Attorney to withdraw the surname refusal. Moreover, the Applicant submits that the PTO has already determined that Applicant’s Mark has a primary significance other than merely as a surname, as Applicant owns four other registrations consisting of the identical term “Schrafft” for closely related goods and services, namely, U.S. Registration Nos. 4392606, 4415120, 4384135, and 3746532—all of which were previously registered without proof of acquired distinctiveness. Printouts of these registrations from the PTO’s TSDR database showing current status and title are attached as Exhibit 1. Although the Applicants understands that these prior decisions are not dispositive with respect to the Examining Attorney’s decision in this case, Applicant respectfully submits that each of these four registrations, which were examined by three separate examining attorneys, are consistent with Applicant’s request in the current case. III. Conclusion Although the term “Schrafft” in Applicant’s Mark refers to the surname of the founder of a related business, this factor is significantly outweighed by the combination of the following factors: (1) the term “Schrafft” is rarely used as a surname; (2) Applicant’s Mark does not have the structure, pronunciation, or “look and feel” of a surname; (3) Applicant’s Mark primarily connotes a historical place; and (4) the term “Schrafft” refers to the surname of the founder of a related business only. Accordingly, and consistent with prior examinations by the PTO, Applicant’s Mark has, on balance, a primary significance other than merely as a surname, and the evidence of record is insufficient to establish a prima facie case that the primary—and only—significance of Applicant’s Mark to the purchasing public is merely as a surname. For all of these reasons, Applicant respectfully requests that the Examining Attorney withdraw the surname refusal under Section 2(e)(4) and approve Applicant’s Mark for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_6949136242-20191010105551990732_._Exhibits_1-4_SCHRAFFT_S.PDF |
| CONVERTED PDF FILE(S) (28 pages) |
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| DESCRIPTION OF EVIDENCE FILE | Exhibits 1-4 |
| ATTORNEY SECTION (current) | |
| NAME | Kyle J. Glover |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | Pierce Atwood LLP |
| STREET | 254 Commercial Street |
| CITY | Portland |
| STATE | Maine |
| POSTAL CODE | 04101 |
| COUNTRY | US |
| PHONE | 207-791-1100 |
| FAX | 207-791-1350 |
| trademark@pierceatwood.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 35403/2538 |
| ATTORNEY SECTION (proposed) | |
| NAME | Kyle J. Glover |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | Pierce Atwood LLP |
| STREET | 254 Commercial Street |
| CITY | Portland |
| STATE | Maine |
| POSTAL CODE | 04101 |
| COUNTRY | United States |
| PHONE | 207-791-1100 |
| FAX | 207-791-1350 |
| trademark@pierceatwood.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 35403/2538 |
| OTHER APPOINTED ATTORNEY | each of the attorneys of Pierce Atwood LLP |
| CORRESPONDENCE SECTION (current) | |
| NAME | Kyle J. Glover |
| FIRM NAME | Pierce Atwood LLP |
| STREET | 254 Commercial Street |
| CITY | Portland |
| STATE | Maine |
| POSTAL CODE | 04101 |
| COUNTRY | US |
| PHONE | 207-791-1100 |
| FAX | 207-791-1350 |
| trademark@pierceatwood.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 35403/2538 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Kyle J. Glover |
| FIRM NAME | Pierce Atwood LLP |
| STREET | 254 Commercial Street |
| CITY | Portland |
| STATE | Maine |
| POSTAL CODE | 04101 |
| COUNTRY | United States |
| PHONE | 207-791-1100 |
| FAX | 207-791-1350 |
| trademark@pierceatwood.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 35403/2538 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Kyle J. Glover/ |
| SIGNATORY'S NAME | Kyle J. Glover |
| SIGNATORY'S POSITION | Attorney of Record, Maine Bar Member |
| SIGNATORY'S PHONE NUMBER | 207-791-1100 |
| DATE SIGNED | 10/10/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Oct 10 14:50:44 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0191010145044588032-87670 916-61095b68638b759a59979 5ce07f2383ea34ace2e642f61 e694918b6489b8deb7dc-N/A- N/A-20191010105551990732 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Argument
Applicant hereby responds to the Office Action issued on April 10, 2019, which is supplemental to and supersedes the previous Office Action issued on October 3, 2018 for the above-identified application. For the reasons discussed below, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register Applicant’s mark SCHRAFFT’S (“Applicant’s Mark”).
I. Section 2(f) Acquired Distinctiveness Claim
The Examining Attorney requested clarification on Applicant’s intent to claim acquired distinctiveness, and requested that Applicant either satisfy the requirements set out in TMEP §1212.09(a) or request that the Section 2(f) claim be deleted from the application. Applicant hereby requests that the Section 2(f) claim be deleted from the application; provided, however, that Applicant reserves the right to reassert such claim, if necessary.
II. Refusal pursuant to Section 2(e)(4)
The Examining Attorney has refused to register Applicant’s Mark on the ground that the mark is primarily merely a surname. Applicant respectfully requests reconsideration and withdrawal of the surname refusal because Applicant’s Mark has a primary significance other than merely as a surname and, on balance, the evidence of record is insufficient to establish that Applicant’s Mark is primarily merely a surname.
The test for determining whether a mark is primarily merely a surname is the primary significance of the mark as a whole to the purchasing public. In re Hutchinson Tech., Inc., 852 F.2d 552, 554 (Fed. Cir. 1988). Thus, the impact that Applicant’s Mark has or would have on the purchasing public must be evaluated in determining whether the primary, and only, significance of Applicant’s Mark is as a surname. See In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016) (citing In re Harris-Intertype Corp., 518 F.2d 629 (CCPA 1975)); TMEP §1211.01.
The Board has identified five key inquiries, each analyzed in turn below, that may lead to evidence regarding the public’s perception of a term’s primary significance: (1) whether the surname is rare; (2) whether it has the “structure and pronunciation” of a surname; (3) whether the term has any recognized meaning other than as a surname; (4) whether the term is the surname of anyone connected with the applicant; and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression. In re Eximius Coffee, 120 USPQ2d at 1278 (citing In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333–1334 (TTAB 1995)). Where, as here, the applied-for mark is not stylized, it is not necessary to consider the fifth inquiry. In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007).
The evidentiary burden is initially on the Examining Attorney to establish a prima facie case that Applicant’s Mark is primarily merely a surname, after which the burden shifts to the Applicant to rebut this showing. See TMEP §1211.02(a). If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant. In re Yeley, 85 USPQ2d at 1151; In re Benthin, 37 USPQ2d at 1334; TMEP §1211.01.
For the reasons set forth below, Applicant respectfully submits that, on balance, Applicant’s Mark has a primary significance other than merely as a surname, and the evidence of record is insufficient to establish a prima facie case that the primary—and only—significance of Applicant’s Mark to the purchasing public is merely as a surname.
A. The term “Schrafft” is rarely used as a surname.
Evidence that a term is rarely used as a surname supports a determination that its primary significance is not merely a surname. See In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994); In re Benthin, 37 USPQ2d at 1334; TMEP §1211.01(a)(v). The Examining Attorney submitted evidence from WhitePages and LEXISNEXIS showing “the applied-for mark appearing 72 and 32 times, respectively, in a surname in a nationwide phone directory of names and the LEXISNEXIS surname database.” Although the Examining Attorney acknowledged that the term “Schrafft” “appears to be a relatively rare surname,” the Examining Attorney also asserted that such evidence establishes the surname significance of the term “Schrafft.”
Under Board precedent, however, the type and level of evidence submitted by the Examining Attorney is insufficient to support a surname refusal. For example, the Board reversed the Examining Attorney’s surname refusal of the mark SAVA finding that, based on evidence from the PHONEDISC database disclosing 100 listings for the term “Sava,” the term’s use as a surname was very rare in the United States. See In re Sava, 32 USPQ2d at 1381. Similarly, the Board found that evidence of approximately 100 United States surname listings showed that the term “Benthin” was a rare surname and a factor weighing against a finding that the term would be perceived primarily merely a surname. See In re Benthin, 37 USPQ2d at 1333.
Here, as in Sava and Benthin, the evidence demonstrates that use of the term “Schrafft” as a surname is rare, as correctly acknowledged by the Examining Attorney. Thus, the rarity of the term “Schrafft” as a surname weighs in favor of a determination that the primary significance of Applicant’s Mark to the purchasing public is other than merely as a surname.
B. Applicant’s Mark does not have the structure or pronunciation of a surname.
Whether a term has the structure or pronunciation of a surname is a fairly subjective determination. The Board has stated, “certain rare surnames look like surnames and certain rare surnames do not.” See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) (finding “Pirelli” falls into the former category, while “Kodak” falls into the latter). For names in the latter category, even in the absence of non-surname significance, a reasonable application of the “primary significance to the purchasing public” test could result in a finding that the surname, when used as a mark, would be perceived as arbitrary or fanciful. See, e.g., In re United Distillers plc, 56 USPQ2d 1220, 1222 (TTAB 2000) (finding HACKLER does not have the look and feel of a surname); see also In re Joint-Stock Co. “Baik,” 84 USPQ2d 1921, 1923 (TTAB 2007) (finding lack of other recognized meaning does not in itself imbue a mark with the “look and feel” of a surname); see also TMEP §1211.01(a)(vi).
In support of the assertion that Applicant’s Mark has the structure and pronunciation of a surname, the Examining Attorney submitted evidence comparing the term “Schrafft” with the term “Kraft.” Such comparison also requires the Examining Attorney “provide evidence to show that the public would be likely to perceive the mark as a surname due to the similar structure, such as evidence that the terms to which the mark is being compared are common surnames to which the public has been exposed.” In re Eximius Coffee, 120 USPQD2d at 1280; see also In re Bed & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017); TMEP §1211.01(a)(vi). “The mere sharing of a prefix, suffix or letter string does not result in the sort of structural similarity that is helpful to [the surname] analysis.” In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1724 (TTAB 2016) (further noting that arguments about surname structure and pronunciation “would require more objective evidence . . . of how members of the public would perceive the structure and sound of [the applied-for mark] and whether they would be likely to perceive it as similar to the structure and sound of other surnames, common words or coined terms”).
Applicant submits that “Schrafft” is a rare surname (as discussed above) that, similar to “Pirelli” and HACKLER, does not have the structure, pronunciation, or “look and feel” of a surname. In addition, the Examining Attorney’s comparison of “Schrafft” to “Kraft” is improper because the terms lack the requisite structural similarity or pronunciation, which is not overcome by the fact that the terms rhyme or arguably share the differently spelled letter string “a[f]ft.” Moreover, the record does not include any objective evidence of how members of the public would perceive the structure and sound of Applicant’s Mark and whether they would be likely to perceive it as similar to the structure and sound of the term “Kraft.” This factor again weighs in favor of a determination that the primary significance of Applicant’s Mark to the purchasing public is other than merely as a surname.
C. Applicant’s Mark primarily connotes a historical place.
Evidence that a term has no recognized meaning other than as a surname is evidence of the surname significance of the term. See In re Eximius Coffee, 120 USPQ2d at 1280; TMEP §1211.01(a).
In support of the assertion that the term “Schrafft” has no recognized meaning or significance other than as a surname, the Examining Attorney relies on evidence showing that term “Schrafft” is not found in a dictionary. But, a term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person. See, e.g., Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 331 (S.D.N.Y. 1970) (holding DA VINCA not primarily merely a surname because it primarily connotes Leonardo Da Vinci); In re Pyro-Spectaculars, Inc., 63 USPQ2d 2022, 2024 (TTAB 2002) (holding SOUSA not primarily merely a surname because of the present-day recognition and continuing fame of John Philip Sousa, a composer of patriotic music, and the likely association by potential purchasers of the term SOUSA with patriotic events and music when used in connection with fireworks”); see also TMEP §1211.01(a)(iv).
In this case, Applicant’s mark is not primarily merely a surname because it primarily connotes the historical SCHRAFFT’S restaurants in New York City, which
enjoy present-day recognition and continuing fame for their role in U.S. history in launching mass-market menus and graciousness directed particularly to the female customer. See, e.g., Paul Freedman,
“Schraffts: Seeking out the Female Customer,” Ten Restaurants That Changed America 127 (2016), a copy of which is attached as Exhibit 2 (“Although there are today thousands of
restaurants, coffee places, and cafés where one can work or distract oneself, the particular kind of middle-class leisure provided by Schrafft’s is impossible to duplicate.”).
D. The term “Schrafft” refers to the surname of the founder of a related business.
As the Examining Attorney points out, evidence that a term is the surname of an individual associated with the applicant (e.g., an officer or founder) is another factor that is relevant to the determination whether the primary significance of a mark to the purchasing public is merely as a surname. See In re Etablissements Dary et Fils, 759 F.2d 15, 17 (Fed. Cir. 1985); TMEP §1211.02(b)(iv). Although no one associated with Applicant uses “Schrafft” as a surname, Applicant acknowledges that, on the evidence presented by the Examining Attorney, the term “Schrafft” in Applicant’s Mark derives from William F. Schrafft, who founded the related Boston-based candy business. Applicant respectfully submits that Frank G. Shattuck, however, is generally recognized as the founder of the SCHRAFFT’S restaurant chain, as is stated in the Wikipedia Article “Schrafft’s (restaurant chain)” submitted by the Examining Attorney in support of the Office Action, a copy of which is attached as Exhibit 3. See also “Success of Schraft [sic] Shopes Inspiration to Bakers,” Baker’s Helper (August 1, 1921) (contemporary article describing Shattuck as the founder of the Schraft’s [sic] restaurant chain), a copy of which is attached as Exhibit 4. While Applicant agrees that this factor, on balance, weighs in favor of surname significance, Applicable respectfully submits that this factor is relatively weak and outweighed by the other factors discussed and by the additional comments below.
E. Remaining doubts should be resolved in favor of Applicant.
If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant. In re Yeley, 85 USPQ2d at 1151; In re Benthin, 37 USPQ2d at 1334; TMEP §1211.01. At a minimum, the arguments above raise doubts as to whether Applicant’s Mark is primarily merely a surname, which provides a sufficient basis for the Examining Attorney to withdraw the surname refusal.
Moreover, the Applicant submits that the PTO has already determined that Applicant’s Mark has a primary significance other than merely as a surname, as Applicant owns four other registrations consisting of the identical term “Schrafft” for closely related goods and services, namely, U.S. Registration Nos. 4392606, 4415120, 4384135, and 3746532—all of which were previously registered without proof of acquired distinctiveness. Printouts of these registrations from the PTO’s TSDR database showing current status and title are attached as Exhibit 1. Although the Applicants understands that these prior decisions are not dispositive with respect to the Examining Attorney’s decision in this case, Applicant respectfully submits that each of these four registrations, which were examined by three separate examining attorneys, are consistent with Applicant’s request in the current case.
III. Conclusion
Although the term “Schrafft” in Applicant’s Mark refers to the surname of the founder of a related business, this factor is significantly outweighed by the combination of the following factors: (1) the term “Schrafft” is rarely used as a surname; (2) Applicant’s Mark does not have the structure, pronunciation, or “look and feel” of a surname; (3) Applicant’s Mark primarily connotes a historical place; and (4) the term “Schrafft” refers to the surname of the founder of a related business only. Accordingly, and consistent with prior examinations by the PTO, Applicant’s Mark has, on balance, a primary significance other than merely as a surname, and the evidence of record is insufficient to establish a prima facie case that the primary—and only—significance of Applicant’s Mark to the purchasing public is merely as a surname.
For all of these reasons, Applicant respectfully requests that the Examining Attorney withdraw the surname refusal under Section 2(e)(4) and approve Applicant’s Mark for publication.
