To: | Brookshire Brothers, Inc. (ipdocket@dykema.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88134495 - BROOKSHIRE BROTHERS PHARMACY - 720364.162 |
Sent: | 1/9/2019 4:18:47 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88134495
MARK: BROOKSHIRE BROTHERS PHARMACY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Brookshire Brothers, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 1/9/2019
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 THAT APPLICANT MUST ADDRESS
SECTION 2(e)(4) – PRIMARILY MERELY A SURNAME
An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods and/or services, “‘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 attached evidence from LEXISNEXIS®, establishing the surname significance of BROOKSHIRE. This evidence shows the applied-for mark appearing 7707 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.
A nondistinctive term is typically accorded less weight and is not likely to detract from the primary surname significance of the mark. See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1481 n.9, 1482 (TTAB 2017) (construing In re Hutchinson Tech. Inc., 852 F.2d at 554, 7 USPQ2d at 1492-93); TMEP §1211.01(b)(vi). Although individual components of a mark may be weighed to determine the mark’s overall commercial impression, the combination of the individual parts must be viewed as a whole to determine if the additional term alters the primary significance of the mark to the purchasing public. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d at 1378-79, 123 USPQ2d at 1414 (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174-75, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)).
In this case, the addition of BROTHERS does not alter the primary significance of the mark as a whole from that of a surname. The addition of a common and nondistinctive entity designation, such as “Inc.” or “Co.,” or wording that identifies a family business, such as “Bros.” or “& Sons,” does not diminish the surname significance of a term that is otherwise primarily merely a surname. See In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 206, 98 USPQ 265, 267 (C.C.P.A. 1953) (S. SEIDENBERG & CO’S.); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (BARR GROUP); In re P.J. Fitzpatrick, Inc., 95 USPQ2d 1412, 1412 (TTAB 2010) (P.J. FITZPATRICK, INC.); In re Piano Factory Grp. Inc., 85 USPQ2d 1522, 1526-27 (TTAB 2007) (VOSE & SONS). The attachment from Collins English Dictionary describes the term as “[b]rothers is used in the names of some companies and shops.” Thus the term is an entity designator.
Specifically, the term PHARMACY is generic for the applicant’s retail pharmacy services. The term RX is merely an abbreviation for prescription which is generic for the product provided through the applicant’s pharmacy services. Therefore, when the terms are combined with the surname it does not create a separate, distinct commercial impression.
In view of the foregoing, the primary significance of BROOKSHIRE is primarily merely that of a surname, and registration on the Principal Register is therefore refused.
RESPONSE OPTIONS
(1) Prior Registrations: Applicant may claim ownership of one or more active prior registrations on the Principal Register of the same mark for goods and/or services that are sufficiently similar to those named in the pending application. 37 C.F.R. §2.41(a)(1); TMEP §§1212, 1212.04. Applicant may do so by submitting the following statement, if accurate: “The mark has become distinctive of the goods and/or services as evidenced by the ownership of active U.S. Registration No(s). __________ on the Principal Register for the same mark for sufficiently similar goods and/or services.” TMEP §1212.04(e).
(2) Five Years’ Use: Applicant may 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).
(3) Other Evidence: Applicant may submit other evidence of acquired distinctiveness, with the following statement, if accurate: “The evidence shows that the mark has become distinctive of the goods and/or services.” 37 C.F.R. §2.41(a)(3); TMEP §1212.06. Such additional evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).” In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)).
If applicant cannot satisfy one of the above, applicant may respond 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).
DISCLAIMER ADVISORY
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “BROTHERS PHARMACY” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
CLAIMED PRIOR REGISTRATIONS NOT PERTINENT
PRIOR PENDING APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
ASSISTANCE
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.
/Tarah Hardy Ludlow/
Examining Attorney
Law Office 110
571-272-9361
tarah.hardy@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.
Search: |
Public Records : Surname |
Terms: |
last-name(brookshire) maxresults(2000) |
Total number found: 7707 |
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No. |
Name |
Address |
Phone |
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1. |
BROOKSHIRE, A |
394 S 52ND |
541-497-0833 |
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2. |
BROOKSHIRE, A |
6321 BRANFORD |
828-729-3151 |
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3. |
BROOKSHIRE, A |
6321 BRANFORD |
828-850-3077 |
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4. |
BROOKSHIRE, A |
2709 BRASSIE |
312-927-8033 |
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5. |
BROOKSHIRE, A |
2709 BRASSIE |
708-220-2376 |
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6. |
BROOKSHIRE, A |
202 DECATUR |
318-560-5680 |
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7. |
BROOKSHIRE, A |
1008 S HARMONY |
509-270-3099 |
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8. |
BROOKSHIRE, A |
1008 S HARMONY |
509-901-0328 |
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9. |
BROOKSHIRE, A |
313 IVY RIDGE |
770-401-7845 |
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10. |
BROOKSHIRE, A |
3201 KARI APT 815 |
903-217-7027 |
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11. |
BROOKSHIRE, A |
203 N LA SALLE STE 2100 |
312-927-8033 |
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12. |
BROOKSHIRE, A |
203 N LA SALLE STE 2100 |
708-220-2376 |
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13. |
BROOKSHIRE, A |
203 N LA SALLE STE 2100 |
708-642-9376 |
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14. |
BROOKSHIRE, A |
504 E LEXINGTON |
816-521-9850 |
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15. |
BROOKSHIRE, A |
116 S MEYERS |
509-263-4215 |
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16. |
BROOKSHIRE, A |
116 S MEYERS |
509-270-3099 |
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17. |
BROOKSHIRE, A |
116 S MEYERS |
509-901-0328 |
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18. |
BROOKSHIRE, A |
373 PINEWOOD |
336-953-5677 |
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19. |
BROOKSHIRE, A I |
PO BOX 770457 |
970-879-1234 |
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20. |
BROOKSHIRE, A V |
PO BOX 84 |
269-476-1383 |
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21. |
BROOKSHIRE, A |
16019 RUSTLERS TRAIL |
816-682-7213 |
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22. |
BROOKSHIRE, A |
4345 SILVERLEAF |
757-717-3684 |
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23. |
BROOKSHIRE, A |
8106 STAR TREK |
714-858-0424 |
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24. |
BROOKSHIRE, A |
703 WADE HAMPTON |
864-201-8457 |
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25. |
BROOKSHIRE, A |
413 WELSH |
859-494-5865 |
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26. |
BROOKSHIRE, A |
4505 WILLA CREEK APT 203 |
407-405-7882 |
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27. |
BROOKSHIRE, A |
ALPHARETTA, GA 30004 |
678-682-1353 |
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28. |
BROOKSHIRE, A |
AMARILLO, TX 79101 |
806-576-9664 |
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29. |
BROOKSHIRE, A |
ASHEBORO, NC 27203 |
336-302-6586 |
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30. |
BROOKSHIRE, A |
ASHEVILLE, NC 28806 |
828-301-0334 |
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31. |
BROOKSHIRE, A |
ATHENS, GA 30601 |
706-308-3354 |
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32. |
BROOKSHIRE, A |
ATLANTA, GA 30032 |
404-376-7512 |
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33. |
BROOKSHIRE, A |
ATLANTA, GA 30188 |
770-402-5965 |
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34. |
BROOKSHIRE, A |
ATLANTA, GA 30301 |
404-376-7512 |
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35. |
BROOKSHIRE, A |
ATLANTA, GA 30301 |
770-402-5965 |
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36. |
BROOKSHIRE, A |
ATLANTA, GA 30309 |
678-592-4875 |
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37. |
BROOKSHIRE, A |
ATLANTA, GA 30345 |
678-548-5576 |
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38. |
BROOKSHIRE, A |
BABSON PARK, FL 33827 |
863-589-2747 |
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39. |
BROOKSHIRE, A |
BAKERSFIELD, CA 93301 |
661-623-7033 |
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40. |
BROOKSHIRE, A |
BAKERSFIELD, CA 93301 |
661-623-7035 |
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41. |
BROOKSHIRE, A |
BAKERSFIELD, CA 93301 |
661-623-7036 |
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42. |
BROOKSHIRE, A |
BALLWIN, MO 63011 |
573-247-5826 |
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43. |
BROOKSHIRE, A |
BATON ROUGE, LA 70814 |
225-200-1017 |
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44. |
BROOKSHIRE, A |
BIRMINGHAM, AL 35203 |
205-835-4245 |
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45. |
BROOKSHIRE, A |
CEDARTOWN, GA 30125 |
678-988-4300 |
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46. |
BROOKSHIRE, A |
CHARLOTTE, NC 28217 |
704-898-4596 |
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47. |
BROOKSHIRE, A |
CHICAGO HEIGHTS, IL 60411 |
708-539-2393 |
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48. |
BROOKSHIRE, A |
CLARKESVILLE, GA 30523 |
706-499-1511 |
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49. |
BROOKSHIRE, A |
CUDAHY, WI 53110 |
414-366-2029 |
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50. |
BROOKSHIRE, A |
DAYTON, OH 45469 |
937-520-8123 |
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Search: |
Public Records: Surname |
Terms: |
last-name(brookshire) maxresults(2000) |
Date/Time: |
Wednesday, January 09, 2019 12:33 PM |
Permissible Use: |
Your DPPA Permissible Use: I have no permissible use Your GLBA Permissible Use: I have no permissible use |
Copyright © 2019 LexisNexis, a division of Reed Elsevier Inc. All Rights Reserved.