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.  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: 6/7/2019

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office Action is in response to applicant’s communication filed on May 9, 2019.

 

In a previous Office action dated November 26, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(4) for being primarily merely a surname. The trademark examining attorney also had advised the applicant of amending the identification of goods, which has been satisfied.

 

The trademark examining attorney has thoroughly reviewed the applicant’s response and finds that the arguments presented in response to the Section 2(e)(4) primarily merely a surname refusal unpersuasive. Accordingly, for the reasons set forth below, the Section 2(e)(4) Refusal is maintained and made FINAL. See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES:

• Section 2(e)(4) Refusal – Primarily Merely a Surname
• Section 2(f) Advisory – Acquired Distinctiveness
• Supplemental Register

 

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. 

 

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 attached evidence from Ancient Faces and Names.org, along with the previously provided evidence from Forebears, Ancestry.com, and the Lexis Nexis surnames database, which establish the surname significance of PIRELLI.  The page from Ancient Faces shows that there are 228 records of the Pirelli family, including birth, death, marriage and divorce records (see http://www.ancientfaces.com/surname/pirelli-family-history/378228).  The Names.org page demonstrates that PIRELLI is more significantly a “last name” as there are 197 instances of it used as a surname in the United States since 2010 (see http://www.names.org/n/pirelli/about).

 

Applicant argues that PIRELLI is a rare surname and therefore should not be refused as primarily merely a surname. However, it has been established that PIRELLI is a common enough surname. Even if “PIRELLI” was a relatively rare surname, the statute makes no distinction between rare and commonplace surnames and even a rare surname may be unregistrable under Trademark Act Section 2(e)(4) if its primary significance to purchasers is that of a surname.  See In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1281 (TTAB 2016) (citing In re E. Martinoni Co., 189 USPQ 589, 590-91 (TTAB 1975)); TMEP §1211.01(a)(v).  There is no minimum amount of evidence needed to establish that a mark is primarily merely a surname.  See In re Etablissements Darty et Fils, 759 F.2d at 17, 225 USPQ at 653; In re Beds & Bars Ltd., 122 USPQ2d at 1548; TMEP §1211.02(b)(i).

 

As established in the prior Office action, PIRELLI’s primary significance is that of a surname because it is the surname of the founder of the applicant’s company. A term that is the surname of an individual applicant or that of an officer, founder, owner, or principal of applicant’s business is probative evidence of the term’s surname significance.  TMEP §1211.02(b)(iv); see, e.g., In re Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ 652, 653 (Fed. Cir. 1985) (holding DARTY primarily merely a surname where “Darty” was the surname of applicant’s corporate president); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-80 (TTAB 2016) (holding ALDECOA primarily merely a surname where ALDECOA was the surname of the founder and individuals continuously involved in the business); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (holding BARR GROUP primarily merely a surname where BARR was the surname of the co-founder and applicant’s corporate officer and GROUP was found “incapable of lending source-identifying significance to the mark”); Miller v. Miller, 105 USPQ2d 1615, 1620, 1622-23 (TTAB 2013) (holding MILLER LAW GROUP primarily merely a surname where “Miller” was the surname of the applicant and the term “law group” was found generic).

 

A term appearing on an applicant’s own website in a manner that confirms the term’s surname significance is probative evidence on the issue of that term’s primary significance.  See In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-80 (TTAB 2016) (holding ALDECOA primarily merely a surname where applicant’s website explains the Aldecoa family history in coffee for three generations and notes that the current generation of coffee brewers shares the same surname); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (holding BARR GROUP primarily merely a surname where applicant’s website promotes its association with Mr. Michael Barr and his credentials and accomplishments as an active participant in applicant’s activities under the mark). The attached page from a news release from the applicant’s website highlights the history of the founder Giovanni Battista Pirelli, who started a company to manufacture and sell articles in elastic rubber (see http://www.pirelli.com/global/en-ww/life/happy-birthday-pirelli?search=giovanni%20pirelli).

 

Applicant claims that there is no person connected with it that uses “PIRELLI” as a surname and argues this proves the term has no surname significance.  However, the fact that “a proposed mark is not applicant’s surname, or the surname of an officer or employee, does not tend to establish one way or the other whether the proposed mark would be perceived as a surname.”  In re Thermo LabSystems Inc., 85 USPQ2d 1285, 1287 (TTAB 2007) (quoting In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004)); see In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1724 (TTAB 2016).  In a surname analysis, the absence of a living person connected with applicant that has this term as a surname is a neutral factor.  In re Thermo LabSystems Inc., 85 USPQ2d at 1287. However, as established above, the company was started by Giovanni Battista Pirelli, whose last name is the basis of the applied-for mark, giving it the make and appearance of a surname.

 

With regard to the third element, 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 attached evidence from the Collins English Dictionary and the Columbia Gazetteer establish that PIRELLI has no other meaning in the dictionary, nor is it associated with a geographic location.  Thus, this term appears to have no recognized meaning or significance other than as a surname. 

 

• http://www.collinsdictionary.com/us/spellcheck/english?q=pirelli
• http://www.columbiagazetteer.org/main/search?name=pirelli&search-type=quick

 

With regard to the fourth element, 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). Apart from the page from Forebears that was previously provided, the attached page from Names.org has a list of related names, including Perrelli, Perel, Perley, Perlie, and Perla (see http://www.names.org/n/pirelli/about). Thus, PIRELLI has the structure and pronunciation of a surname.

 

Applicant refers to TMEP §1211.01 regarding the test of determining whether a mark is primarily merely a surname. However, §1211.01(a)(vi) states that “some names, by their very  nature, have only surname significance even though they are rare surnames. See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) (holding PIRELLI primarily merely a surname, the Board stated that “certain rare surnames look like surnames and certain rare surnames do not and… ‘PIRELLI’ falls into the former category…”).” Thus, PIRELLI has the structure and appearance of a surname, and the purchasing public would likely consider PIRELLI a surname when encountering it in the marketplace.

 

Finally, with regard to the fifth element concerning the stylization of the mark, the mark is not so sufficiently stylized that it removes the primary significance from that of a surname.

 

The applicant argues that the elongated “P” in the applied-for mark is distinctive and provided several examples of the elongated P “standing alone conveys to the purchasing public that it unmistakably represents the complete mark.” However, the applicant did not provide evidence of distinctiveness in the marketplace of the complete applied-for mark with the elongated “P”. Rather, applicant’s evidence consists of the prior registration of the elongated “P” and the distinctiveness of the elongated “P” mark in the eyes of the purchasing public.  The applied-for mark consists of not just the elongated “P” but it exists in connection with the surname PIRELLI. Despite the distinctiveness of the elongated “P”, when used with PIRELLI, the stylization does not overcome the perception of PIRELLI as primarily merely a surname.

 

In addition, evidence of a term’s recognition and fame (e.g., consumer surveys, promotional expenditures) 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). Here, applicant has not provided evidence of the applied-for mark PIRELLI’s recognition and fame. Rather, the evidence provided is only related to the elongated “P” portion of the applied-for mark. Thus, applicant has not demonstrated acquired distinctiveness of the entire applied-for mark’s recognition or fame in the marketplace.

 

Therefore, the refusal to register the applied-for mark, PIRELLI, based on the mark being primarily merely a surname, is maintained and made FINAL under Section 2(e)(4) of the Trademark Act.

 

SECTION 2(f) ADVISORY – ACQUIRED DISTINCTIVENESS

 

If applicant believes applicant’s mark has acquired distinctiveness in the United States, that the mark has become a distinctive source indicator for the applied-for goods and/or services, applicant may amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f) based on (1) extrinsic evidence and/or (2) five years’ use in commerce that may be regulated by the U.S. Congress.  See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2)-(3); TMEP §1212.08.  The USPTO decides each case on its own merits.  See TMEP §1212.06.

 

To establish acquired distinctiveness by extrinsic evidence or long-term use, an applicant may rely only on use in commerce that may be regulated by the U.S. Congress.  See 15 U.S.C. §§1052(f), 1127.  Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States.  TMEP §§1010, 1212.08; see In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999).

 

Extrinsic Evidence of Acquired Distinctiveness:

 

To support a claim based on extrinsic evidence, applicant may submit evidence of “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)).  A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, the determination involves assessing all of the circumstances involving the use of the mark.  See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).

 

Verified Statement of Five Years’ Use:

 

To amend the application to assert Section 2(f) based on five years’ use, applicant should provide (1) information regarding the length of use of the mark in commerce and/or dates of use, and (2) the following written statement claiming acquired distinctiveness, if accurate:

 

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.

 

See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §§1212.05(d), 1212.08.  This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

SUPPLEMENTAL REGISTER

 

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.  TMEP §816.04.

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)        an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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.  

 

 

 

/Harini Ganesh/

Harini Ganesh

Trademark Examining Attorney

Law Office 122

571-272-5128

harini.ganesh@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 6/7/2019 FOR U.S. APPLICATION SERIAL NO. 88149213

 

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 6/7/2019 (or sooner if specified in the Office action).  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.  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 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.