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:  March 02, 2021

 

This Office action is in response to applicant’s communication filed on January 26, 2021.

 

In a previous Office action dated October 28, 2019, the trademark examining attorney maintained the refusal to register the applied-for mark based on the following: 

 

·         §2(e)(4) Surname Refusal—Primarily Merely a Surname

·         Foreign Registration Certificate Required

 

REQUIREMENTS SATISFIED: The following requirement has been satisfied:

 

·         Foreign Registration Certificate Requirement

 

See TMEP §§713.02, 714.04.

 

However, based on the applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal 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:

 

·         §2(e)(4) Surname Refusal—Primarily Merely a Surname (Continued and Maintained)

 

All Relevant Arguments and Evidence Included with the Previous Office Action are Continued and Maintained and Incorporated Herein by Reference.

 

§2(e)(4) SURNAME REFUSAL—PRIMARILY MERELY A SURNAME

 

Registration remains 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 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.

 

The following are examples of evidence that is generally considered to be relevant to such a determination:  telephone directory listings, excerpted listings and articles from computerized research databases, applicant’s website, evidence in the application record showing the term used as a surname, the manner of use on specimens, dictionary definitions of the term and evidence from dictionaries showing no definition of the term.  See TMEP §1211.02(b)(i)-(b)(iii), (b)(v)-(b)(vi).

 

Please see the attached evidence from 411.com and the LEXISNEXIS® surname database, establishing the surname significance of MIURA.  This evidence shows the applied-for mark appearing more than 900,000 times as a surname in a nationwide phone directory of names on 411.com and more than 1,500 on the LEXISNEXIS® surname database.  Given the large number of people with the surname MIURA, the term is a common surname that is not rare.

 

Additionally, MIURA does not have a recognized meaning or significance 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). 

 

Here, the previously attached evidence from Oxford Dictionary and Macmillan Dictionary shows that there are no entries for MIURA.  Thus, this term appears to have no recognized meaning or significance in English other than as a surname. 

 

Moreover, MIURA has no stylization to remove its primary significance from that of a surname.

 

There is no rule as to the kind or amount of evidence necessary to show that [a] mark would be perceived as primarily merely a surname.  In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016); see TMEP §1211.01.  Each case is decided on its own facts, based on the evidence of record.  TMEP §1211.01; see In re Eximius Coffee, LLC, 120 USPQ2d at 1278 (citing In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985)). Here, the evidence of surname significance, the absence of a recognized meaning or significance in English associated with the term MIURA, and the lack of any additional matter in the applied-for mark to remove the significance of MIURA from that of merely a surname, in total and on balance, favor the determination that MIURA would be perceived as primarily merely a surname.

 

Therefore, because MIURA is primarily merely a surname, registration remains refused pursuant to §2(e)(4) of the Trademark Act.

 

Rebuttal

 

The applicant has argued that the mark is not primarily merely a surname, asserting that: (1) the mark is rare as a surname; (2) the mark has recognized meaning other than a surname; (3) applicant’s mark does not have the look and feel of a surname; (4) applicant’ mark is not the surname of any individual associated with the application; and (5) other registrations and applications for MIURA-Formative trademarks were not challenged as being primarily merely a surname.

 

The examining attorney has considered the arguments by the attorney of record but has determined that they are not persuasive.

 

First, 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).  The applicant assets that the Lexis evidence submitted in the previous Office action shows only 10 instances of the term “MIURA” used as a surname.  As such, the examining attorney has attached supplemental evidence demonstrating more than 1500 instances of MIURA as a surname.  As such, the surname “MIURA” appears not to be a rare surname.  

 

Secondly, the applicant assets that the mark “MIURA” has other non-surname significance, namely, geographical locations in Japan, but a term’s primary significance as a surname may not be lessened even if it also has some minor significance as a geographical term.  See In re Hamilton Pharm. Ltd., 27 USPQ2d 1939, 1943 (TTAB 1993); In re Picone, 221 USPQ 93, 95 (TTAB 1984); TMEP §1211.01(a)(iii).  Further, the examining attorney notes applicant’ assertion that MIURA may also refer to a folding technique or a particular model of a Lamborghini, however, the existence of other non-surname meanings of a mark does not preclude the mark from being held primarily merely a surname.  Miller v. Miller, 105 USPQ2d 1615, 1620-21 (TTAB 2013); see In re Harris-Intertype Corp., 518 F.2d 629, 631, 186 USPQ2d 238, 239 (C.C.P.A. 1975); In re Hamilton Pharms. Ltd., 27 USPQ2d 1939, 1942 (TTAB 1993).  The issue is not whether a mark that has surname significance might also have a non-surname significance, but whether, in the context of an applicant’s goods or services, the non-surname significance is the mark’s primary significance to the purchasing public.  Miller v. Miller, 105 USPQ2d at 1621; see In re Harris-Intertype Corp., 518 F.2d at 631, 186 USPQ2d at 239; In re Hamilton Pharms. Ltd., 27 USPQ2d at 1942.  Here, the applicant failed to supply evidence to establish that consumers in the United States would perceive the mark to refer to a folding technique or the particular model of a Lamborghini, especially in the context of coffee products and services where surnames are commonly used in the marketplace.  See e.g. http://www.elliscoffee.com/; http://www.hillsbros.com/history/; http://www.folgerscoffee.com/our-story/history.  As such, consumers in the United States are more likely to perceive the mark as a surname rather than a folding technique or a particular model of a Lamborghini.

 

Thirdly, even if no objective evidence regarding structure and sound of applicant’s mark was furnished by the examining attorney, it does not follow that a lack of this type of evidence indicates that consumers are not likely to view applicant’ mark as having the look and feel of a surname.  In any case, this factor is not dispositive, and is, at best, neutral.   

 

Fourth, applicant claims that there is no person connected with the application that uses “MIURA” as a surname and concludes that this factor cannot be used to show that applicant’s mark is primarily merely a surname.  In a surname analysis, the absence of a person connected with applicant that has this term as a surname is a neutral factor.  In re Thermo LabSystems Inc., 85 USPQ2d at 1287.  As such, this factor is also neutral.

 

Lastly, the applicant asserts that other registrations and applications for MIURA-formative trademarks were not challenged as being primarily merely a surname and provides a set of MIURA-formative marks purporting to evidence such a claim.  However, the cited mark in Registration No, 2438132 is MIURA VINEYARDS.  The addition of the wording “VINEYARD” removes the marks primary significance from that of a surname. The mark in Registration No. 3927326, MIURA, is presented in a stylized fashion that removes the marks primary significance from that of a surname. The mark in Registration No. 5332487 is MIURA REVIVE.  The addition of the wording “REVIVE” removes the marks primary significance from that of a surname.  The mark in Registration No. 5207994 is MIURA 50 and is presented in a highly stylized fashion with additional wording that removes the marks primary significance from that of a surname.   

 

In conclusion, based on the analysis above, the weight of the evidence suggests that the applied-for mark is primarily merely a surname and the refusal to register under §2(e)(4) is hereby maintained and made FINAL.

 

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).

 

 

Byron S. Barahona, Esq.

/Byron Steve Barahona/

Examining Attorney

Law Office 127

Phone: (571)-270-5579

Byron.Barahona@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 March 02, 2021 for

U.S. Trademark Application Serial No. 88211281

 

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. 

 

 

Byron S. Barahona, Esq.

/Byron Steve Barahona/

Examining Attorney

Law Office 127

Phone: (571)-270-5579

Byron.Barahona@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 March 02, 2021, 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.”