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: 3/14/2019

 

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

 

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.  The primary significance of the mark to the purchasing public determines whether a term is primarily merely a surname.  In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009); see TMEP §§1211, 1211.01.

 

Please see the attached evidence from www.sdbexpress.azurewebsites.net and www.mylastnamestats.com establishing the surname significance of the surname HAMILTON.  This evidence shows the applied-for mark appearing over 229,000 times as a surname in a nationwide census of names.

 

The following five factors are used to determine whether a mark is primarily merelya surname:

 

(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.

 

See In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009); In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995); TMEP §1211.01.

 

The fact that a term is shown to have some significance as a historical figure generally will not dissipate its primary significance as a surname.  See In re Binion, 93 USPQ2d 1531, 1537-38 (TTAB 2009); In re Thermo LabSystems, Inc., 85 USPQ2d 1285, 1289 (TTAB 2007); Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 331, 165 USPQ 459, 461 (S.D.N.Y. 1970); TMEP §1211.01(a)(iv).  The Board has found that where an individual is notable in a particular field, the evidence must show that his or her achievements are “so remarkable” or “so significant” that the primary connotation of the term would be that of an historical individual.  In re Binion, 93 USPQ2d at 1537-38; In re Thermo LabSystems, 85 USPQ2d at 1289.  Further, if the term would be evocative of numerous individuals rather than one particular historical individual, the term does not qualify as a historical name but is merely the surname of numerous individuals with varying degrees of historical significance.  In re Thermo LabSystems, 85 USPQ2d at 1290; TMEP §1211.01(a)(iv).

 

Combining a surname with a term that is merely descriptive, primarily geographically descriptive or deceptively misdescriptive, or generic of an applicant’s goods and/or services typically does not “detract from the primary surname significance” of the mark.  Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1481-82, 1481 n.9 (TTAB 2017) (construing In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492-93 (Fed. Cir. 1988)); see TMEP §1211.01(b)(vi).  The attached information from www.ems1.com shows that “NG911” is merely informational as the commonly understood shorthand for “next generation 911 [emergency call services]” and therefore does not alter the primary significance of “HAMILTON” as a surname.  Accordingly, registration is refused under Section 2(e)(4).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF SERVICES

 

The wording “providing IP (Internet Protocol) network management services” in the identification of services is indefinite and must be clarified because the exact nature of the services is unknown. Management of wireless computer networks for others is properly classified in Class 042.  See TMEP §1402.01.

 

Applicant may adopt the following amended identification, if accurate:

 

·       Telephone, text, and video messaging services for public safety and emergency communications; telecommunication services, namely, transmission of local and long distance voice, data, video, graphics and text messages via telephone, satellite or internet transmission; telecommunications services, namely, routing calls to emergency services providers and transmitting civic location information or geo-coordinates.  [INT. CLASS 038]

 

·       Management of IP (Internet Protocol) wireless computer networks for others  [properly in INT. CLASS 042]

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

CLASSIFICATION OF SERVICES

 

If applicant adopts the suggested amendment of the identification of services, then applicant must amend the classification to add International Class 042, as shown above.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

TEAS REDUCED FEE CORRESPONDENCE REQUIREMENTS

 

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.  

 

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 refusal(s) and/or requirement(s) 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. 

 

Note: An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system.  Enter the application serial number or registration number and click on “Status” or “Documents.”

 

 

 

/Toby E. Bulloff/

Examining Attorney

Law Office 119

(571) 270-1531

toby.bulloff@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 3/14/2019 FOR U.S. APPLICATION SERIAL NO. 88223698

 

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 3/14/2019 (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.