To: | Garcia, Jose F (jgarcia@411attorney.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88217751 - J GARCIA LAW FIRM - N/A |
Sent: | 2/21/2019 1:58:27 PM |
Sent As: | ECOM128@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88217751
MARK: J GARCIA LAW FIRM
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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: Garcia, Jose F
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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: 2/21/2019
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.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
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/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.
Applicant has applied for the mark J GARCIA LAW FIRM in standard characters for use in connection with “Legal services” in Class 045.
Common Surname
Please see the attached evidence from LEXISNEXIS, establishing the surname significance of GARCIA. See attachment from LexisNexis. This evidence shows the applied-for mark appearing 1,719,491 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.
Connection to the Applicant
In this case, the surname GARCIA matches that of the individual applicant and owner of the mark, Jose Garcia. The fact that the applicant’s own surname is “Garcia” is probative evidence that the significance of the term GARCIA is a surname.
Other Meanings of the Term
Structure and Pronunciation of a Surname
In the present case, the term Garcia has a similar structure and pronunciation to other surnames that are recognized by consumers. For example, the proposed mark is similar to other common surnames such as Garza and Garces. See attachments from LexisNexis.
Additional Wording in the Mark
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).
Here, the addition of the nondistinctive term LAW FIRM to the mark does not diminish the surname significance of the term GARCIA. A law firm is a type of business entity and therefore does not weaken the primary significance of GARCIA as merely a surname. See attachment from US Legal.
Thus, applicant may respond to this refusal by submitting evidence showing that the applied-for mark will be perceived by the purchasing public as a personal name, rather than as a surname. Such evidence may include a statement that the applied-for mark is the personal name of a particular living individual accompanied by evidence that this personal name would be recognized as such by the consuming public, and/or evidence that, as a general matter, surnames preceded by a single initial are commonly used in the United States as personal names of particular individuals and thus the applied-for mark will be perceived as such.
If applicant responds to this refusal by indicating that the applied-for mark is the personal name of a particular living individual, applicant must also submit (a) a statement that “J” identifies a living individual whose consent is of record” and (b) a written consent, personally signed by the individual whose name appears in the mark, authorizing applicant to register the name as a trademark and/or service mark with the USPTO. See TMEP §§813, 813.01(a), 1206.04(a).
Ultimately, the attached evidence demonstrates that J GARCIA LAW FIRM is primarily merely a surname. Therefore, registration is refused pursuant to Section 2(e)(4) of the Trademark Act.
Applicant’s Options and Advisories
(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). {insert registration number(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).
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “LAW FIRM” 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.
Applicant should note the following additional ground for refusal.
SECTIONS 1 AND 45 REFUSAL: SPECIMEN FAILS TO SHOW USE IN COMMERCE
Registration is refused because the specimen in International Class 045 is merely a photocopy of the drawing or a picture or rendering of the applied-for mark, and thus fails to show the applied-for mark in use in commerce with the goods and/or services for each international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Chica, 84 USPQ2d 1845, 1848 (TTAB 2007); TMEP §§904, 904.07(a), 1301.04(g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen. However, if applicant amends the filing basis to Section 1(b), applicant will not be able to amend to the Supplemental Register.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusals in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
Hansrajh, Keton
/Keton Hansrajh/
Trademark Examining Attorney
Law Office 128
(571) 272-3396
keton.hansrajh@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.