Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  December 09, 2019

 

This Final Office action is in response to applicant’s communication filed on November 27, 2019.

 

In a previous Office actions dated May 17, 2019 and November 27, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Section 2(e)(4) for a mark that is primarily merely a surname.  In addition, applicant was required to satisfy the following requirements: amend the identification of goods and provide evidence and explanation for its claim of acquired distinctiveness based on Section 2(f).

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: definite amended identification provided.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(e)(4) Refusal – Primarily Merely a Surname
• Claim of Acquired Distinctiveness  Not Supported

 

SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME – MADE FINAL

 

In the Office dated November 27, 2018, registration was refused because applicant’s mark is primarily merely a surname. In its responses, applicant asserted a claim of acquired distinctiveness based on Section 2(f). However, this claim of acquired distinctiveness is insufficient. Thus, this refusal is continued and MADE FINAL.

 

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, “‘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.

 

Please see the previously attached evidence from LEXISNEXIS®, establishing the surname significance of STUDEBAKER.  This evidence shows the applied-for mark appearing 2,534 times as a surname in the LEXISNEXIS® surname database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers. 

 

1)     Whether the Surname is Rare;

 

In this case, the surname “STUDEBAKER” does not appear to be rare, because it appears 2,534 times as a surname in the LEXISNEXIS® surname database. See previously attached. Further, the attached evidence from WhitePages.com shows that the surname “STUDEBAKER” appears 3,655 times as a surname in the White Pages directory. Thus, this evidence shows that this surname is not rare.

 

Additionally, the issue of determining whether a surname is common or rare is not determined solely by comparing the number of listings of the surname to the total number of listings in a computerized database, because even the most common surname would represent only a small fraction of the database.  In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).  Rather, if a surname appears routinely in news reports or articles and receives media publicity so as to be broadly exposed to the general public, then such surname is not rare and its primary significance to purchasers would be that of a surname, such as in this case.  See In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017); In re Gregory, 70 USPQ2d at 1795; TMEP §1211.01(a)(v).

 

In this case, the previously attached news articles from the Atlanta Journal Constitution, Chicago Classical Review, Herald-Palladium, and WGLT.org show that the word “STUDEBAKER” appears routinely in news reports and articles as a surname. Thus, this evidence shows that this surname is not rare and its primary significance to purchasers would be that of a surname.

 

2)     Whether the Term Has Any Recognized Meaning Other than as a Surname;

 

Evidence that a term has no recognized meaning or significance other than as a surname is relevant to determining whether the term would be perceived as primarily merely a surname.  See In re Weiss Watch Co., 123 USPQ2d 1200, 1203 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); TMEP §1211.02(b)(vi).  The previously attached evidence from American Heritage Dictionary and Dictionary.com shows that “STUDEBAKER” is only defined as a surname in the dictionary and has no other meaning. Thus, this term appears to have no recognized meaning or significance other than as a surname. 

 

3)     Whether the Term has the Structure and Pronunciation of a Surname; and

 

Evidence that a term has the structure and pronunciation of a surname may contribute to a finding that the primary significance of the term is that of a surname.  In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); see In re Giger, 78 USPQ2d 1405, 1409 (TTAB 2006); In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004); TMEP §1211.01(a)(vi).

 

In this case, “STUDEBAKER” has the look and feel of a surname because the structure and pronunciation is that of a common surname. Specifically, the previously attached evidence from Forebears and House of Names shows that this surname is similar to other surnames in structure and pronunciation, such as Studebacker, Studabaker, and Studbaker. Thus, the word “STUDEBAKER” has the look and feel of a surname.

 

4)     Whether the Term is Sufficiently Stylized to Remove its Primary Significance from that of a Surname

 

In this case, applicant’s mark is in standard characters. Thus, there is no stylization capable of removing its primary significance from that of a surname.

 

Accordingly, the evidence in the record indicates that “STUDEBAKER” is primarily merely a surname and thus ineligible for trademark registration under Section 2(e)(4).

 

APPLICANT’S ARGUMENTS

 

Applicant argues that the word “STUDEBAKER” is not primarily merely a surname, because “its primary significance is not as a surname, but as a brand” and that it is “a historical brand and would transcend whatever surname significance it may have once had.” The trademark examining does not find this argument persuasive. Evidence of a term’s recognition and fame is only relevant to prove acquired distinctiveness under Trademark Act Section 2(f), and is not pertinent to a determination of surname significance.  See In re Cazes, 21 USPQ2d 1796, 1797 (TTAB 1991) (holding BRASSERIE LIPP primarily merely a surname despite applicant’s evidence of the mark’s fame, noting that applicant did not make a Section 2(f) claim and, without a formal claim of distinctiveness, “evidence of fame [could not] serve as the basis for allowing registration of applicant’s mark”); In re McDonald’s Corp., 230 USPQ 304, 307 (TTAB 1986) (holding McDONALD’S primarily merely a surname despite applicant’s evidence of secondary meaning, noting that, absent a claim of secondary meaning under Section 2(f), “registration must be refused”); TMEP §1211.02(b)(vii). Thus, whether or not applicant’s mark is a “historical brand” is not pertinent to a determination of surname significance.

 

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

 

 

 

CLAIM OF ACQUIRED DISTINCTIVENESS NOT SUPPORTED

 

In its responses dated May 17, 2019 and November 27, 2019, applicant asserted a claim of acquired distinctiveness under Section 2(f) in response to the Section 2(e)(4) refusal. For the reasons below, these claims of acquired distinctiveness are insufficient and this issue is continued and MADE FINAL.

 

SECTION 2(f) CLAIM BASED ON ACTIVE PRIOR REGISTRATIONS – RELATEDNESS OF GOODS NOT SUPPORTED

 

Applicant claims that the applied-for mark has acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s prior registrations for the same mark.  However, the similarity or relatedness of the goods in the prior registrations and the instant application is not self-evident and therefore applicant’s Section 2(f) claim is not acceptable.  See 37 C.F.R. §2.61(b); TMEP §1212.04(c). 

 

Although an applicant’s ownership of one or more active prior registrations of the same mark may be sufficient for a prima facie showing of acquired distinctiveness, the prior registrations must be for sufficiently similar or related goods such that distinctiveness will transfer to the goods in the application.  See 37 C.F.R. §2.41(a)(1); In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999) (citing Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 1405, 222 USPQ 939, 942 (Fed. Cir. 1984)); TMEP §§1212.04, 1212.04(c).

 

In this case, applicant identifies its goods as “Electric, hand-held kitchen appliances, namely, electric mixers and other items in the nature of electric juicers” and “Electric toasters; electric toaster ovens; electric popcorn poppers; electric, hand-held kitchen appliances, namely, toasters, popcorn makers in the nature of popcorn poppers, and sandwich makers.”

 

The registrations identify their goods as “phonographic record players and turntables being record players; CD players, clock radios, namely, radios incorporating clocks,” “record cleaning kits comprised of basins in the nature of receptacles, cleaning brushes, lint rollers, drying cloths, and liquid cleaning solution all for cleaning phonographic records,” and “Electronic products, namely, compact stereos, boom boxes, radios, and personal stereos.”

 

Applicant argues that these goods are similar because they are “electrically powered devices having switches to control voltage, with interior circuit boards housing the capacitors, resistors, chips and coils” and that they are electric items manufactured and designed for everyday use. The trademark examining attorney does not that these arguments demonstrate that the goods are sufficiently similar or related. Specifically, applicant describes its goods as kitchen appliances in International Classes 07 and 011, which are used for food preparation. On the other hand, the registrations identify their goods in International Classes 009 and 021, which are used for playing music. Even though the goods may be electronic, the natures and purposes of the goods appear to be very different. Thus, the goods do not appear to be similar or related and the Section 2(f) claim is not acceptable.

 

Applicant may submit additional evidence and further explanation as to how the goods in the claimed active prior registrations are similar or related to the goods in the application such that distinctiveness will transfer to the goods in the application.  See 37 C.F.R. §2.61(b); Bausch & Lomb, Inc. v. Leupold & Stevens, Inc., 6 USPQ2d 1475, 1477-78 (TTAB 1988); TMEP §1212.04(c).

 

SECTION 2(f) CLAIM BASED ON FIVE YEARS’ USE NOT SUPPORTED

 

Applicant has also asserted a claim of acquired distinctiveness under Section 2(f) based on five years’ use. An intent-to-use applicant who has used the same mark on related goods may assert 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 same mark on other goods, the mark has become distinctive of the goods in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods 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 Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).

 

The Trademark Trial and Appeal Board has set forth the following two 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, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods, 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 sufficient relatedness of the goods in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods 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 involved and the language used to identify them in the application.

 

TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).

 

In this case, applicant’s Section 2(f) claim is not sufficient, because applicant has not demonstrated that the previously created distinctiveness will transfer to the goods in the application upon use. Thus, this claim of acquired distinctiveness is not acceptable.

 

APPLICANT’S ARGUMENTS

 

In its response dated May 17, 2019, applicant argues that a number of third-parties have registered the mark on the Principal Register for various goods and services without a claim of acquired distinctiveness. The trademark examining attorney does not find this argument persuasive. First, two of the cited registrations (U.S. Registration Nos.  3800267 and 4171362) have been cancelled. Cancelled or expired third-party registrations have no probative value other than as evidence that the registrations were issued.  In re Datapipe, Inc., 111 USPQ2d 1330, 1336 n.11 (TTAB 2014); TBMP §704.03(b)(1)(A); see Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 1566, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989). Further, Registration Nos. 4328314 and 4542764 have design elements, which are factors to be considered when assessing whether the mark is primarily merely a surname.

 

Additionally, applicant’s own prior registration, Registration No. 5871217 is registered with a claim of acquired distinctiveness. In applicant’s prior registration, applicant claimed acquired distinctiveness under Trademark Act Section 2(f) unconditionally and not in the alternative for “STUDEBAKER” in a subsequent amendment.  Thus, applicant conceded that this wording was not inherently distinctive but was rather primarily merely a surname.  See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1479 (TTAB 2016) (citing Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009)); TMEP §1212.02(b)-(c).  Accordingly, applicant’s prior registration is probative to show that applicant’s applied-for mark is not inherently distinctive in this case.  See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011); TMEP §1212.02(c).

 

In its response dated November 27, 2019, applicant argues that “there are items that encompass attributes of both the prior registrations as well as the current application,” attaching an image of a miniature kitchen mixer and clock. However, this lone image appears to show that the good is a clock and does not actually function as a mixer. Thus, this image does not sufficiently demonstrate the relatedness of the goods.

 

For these reasons, the trademark examining attorney does not find applicant’s claim of acquired distinctiveness to be sufficient in addressing the Section 2(e)(4) refusal and this issue is continued and MADE FINAL.

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Peter Dang/

Trademark Examining Attorney

Law Office 121

(571) 270-1998

peter.dang@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 09, 2019 for

U.S. Trademark Application Serial No. 88067361

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Peter Dang/

Trademark Examining Attorney

Law Office 121

(571) 270-1998

peter.dang@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 09, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”