| To: | Volstead Corporation (ip@fredlaw.com) |
| Subject: | U.S. Trademark Application Serial No. 88214562 - HOSTER - 17730.2.2 |
| Sent: | October 03, 2019 03:22:40 PM |
| Sent As: | ecom126@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88214562
Mark: HOSTER
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Correspondence Address: |
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Applicant: Volstead Corporation
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Reference/Docket No. 17730.2.2
Correspondence Email Address: |
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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: October 03, 2019
This Office action is in response to applicant’s communication filed on September 4, 2019.
Applicant’s arguments regarding the surname significance of the mark have been considered and found unpersuasive for the reasons set forth below. Therefore, the trademark examining attorney maintains and now makes FINAL the Section 2(e)(4) refusal. See 37 C.F.R. §2.63(b); TMEP §714.04.
Summary of Issues Made Final:
Section 2(e)(4) Refusal – 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 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 evidence that was attached to the March 4, 2019 Office action demonstrated the term HOSTER appearing 425 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. Applicant argues that this evidence demonstrates that HOSTER is a rare surname, as these 425 records represent only a small portion of the U.S. population. However, the trademark 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).
Furthermore, 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. 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 attached evidence from YouTube, Alive, Wikipedia, the Ohio Craft Brewers Association, Columbus Business First, and applicant’s own website and Facebook page demonstrate that the term HOSTER is frequently used as a surname in news articles and advertisements related to applicant’s business. 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).
Applicant also argues that HOSTER is not primarily merely a surname because the term “means a web host or, in other words, a business that provides the services needed for a website to be viewed online.” 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. Applicant has not offered any evidence to suggest that the average American beer purchaser would be familiar with the term “hoster” for a web host, or that this meaning would take precedence in the context of applicant’s beer-related goods and services. In this context, the primary significance of the term HOSTER is much more likely to be that of a surname rather than that of technological jargon, particularly given the evidence in the record that applicant and third parties recognize and promote the history of Louis Hoster’s brewery.
Applicant also argues that the term HOSTER does not have the look and feel of a surname. However, two syllable terms ending in –ER are extremely common surnames in the United States because, as the attached page from ancestry.com indicates, this format reflects an English or German name origin and that the surname was derived from a profession. The attached Census evidence shows that many of the top 1000 names from the 2010 U.S. Census follow this pattern, including Foster, Lester, Hester, and Webster. (Attached image is the top 1000 names spreadsheet from http://www.census.gov/topics/population/genealogy/data/2010_surnames.html, annotated by the trademark examiner). 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).
Finally, applicant argues that the historic use of HOSTER for beer and breweries and applicant’s prior registrations for HOSTER (Reg. No. 5169479) and HOSTER GOLD TOP (Reg. No. 5144810) indicate that consumer will associate the applied-for mark with applicant and not with its use as a surname. However, applicant’s Reg. No. 5169479 for HOSTER is actually evidence that the applied-for term is not inherently distinctive – in that registration, applicant claimed acquired distinctiveness under Trademark Act Section 2(f) unconditionally and not in the alternative for HOSTER in the initial application or 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).
To the extent that applicant’s reliance on the historic use and applicant’s prior registrations was intended to be an argument that the term HOSTER has achieved fame, such evidence is not relevant unless and until applicant makes a claim of acquired distinctiveness. 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). In this case, applicant has not made a claim of acquired distinctiveness.
Therefore, the application record supports the conclusion that HOSTER is primarily merely a surname: the term is used as a surname by a number of people in the United States, is similar in formation to other common surnames, and is recognized and promoted as a surname in connection with beer and applicant’s business, in particular. Applicant has failed to show that any alternate non-surname meaning is likely to supersede the surname significance in this context. Therefore the refusal under Section 2(e)(4) is continued and made final.
Advisory – Supplemental Register or Acquired Distinctiveness
Advisory – Responding to a Final Office Action
Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
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.
/Sara Anne Helmers/
Sara Helmers
Trademark Examining Attorney
Law Office 126
571-270-3639
Sara.Helmers@uspto.gov
RESPONSE GUIDANCE
