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: 5/30/2019

 

 

THIS IS A FINAL ACTION.

 

This Final Action is in response to the applicant’s communication filed on May 2, 2019, in which the applicant responded and argued against the refusal under Section 2(e)4 Primarily Merely a Surname, and amended the identification of goods.  Although, the identification of goods indefinite issue has been obviated, as the reasons set forth below, the refusal under Trademark Act Section 2(e)4 is continued and maintained and now made FINAL. 

 

SUMMARY OF ISSUES:

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

 

SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME

 

This refusal is continued and now made Final.

 

Registration remains refused because the applied-for mark “HATTON” 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 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.

 

The most relevant of these factors are discussed in the paragraphs below.

 

In this case, the applicant has applied for the mark “HATTON.” The word “HATTON” in the applied-for mark has the structure look and feel of a surname.  (See the previously attached internet evidence below).  Additionally, the surname “HATTON” is not rare and the evidence from the LEXISNEXIS® directory of surname database included at the bottom of this Office Action, establishes the common surname significance of “HATTON.” The evidence, which for the sake of brevity consists only of a sampling of the database’s evidence, shows the applied-for mark appearing 16,362 times as a surname in the database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers.  Thus, “HATTON” is not a rare surname.

 

Although it does not immediately appear that “HATTON” is the surname of anyone connected to the applicant, the overwhelming evidence of the meaning of the term as a surname is dispositive in this case.  For example, the previously attached OneLook® dictionary definition screenshot shows that the term “HATTON” is a recognized surname in the United States, and the evidence from the Macmillan Dictionary shows that the term has no other meaning.  See previously attached evidence from http://www.onelook.com/?w=hatton&ls=a and http://www.macmillandictionary.com/us/spellcheck/american/?q=hatton.  Therefore, the term “HATTON” in the mark appears to be that of a surname.

 

“The test for determining whether a mark is primarily merely a surname is the primary significance of the mark as a whole to the purchasing public.”  In re Integrated Embedded, 120 USPQ2d 1504, 1505 (TTAB 2016) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); see In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); TMEP §1211.01. Thus, applicant’s applied-for mark “HATTON” is considered primarily merely a surname and registration is refused under Trademark Act Section 2(e)(4). 

 

In response to the Office action, applicant submits that “[s]urnames typically have a capitalized first letter, whereas the present mark is in all capitals, without highlighting the first character” and arguing that any doubt should be resolved in favor of the applicant.  See applicant’s response.  Further, applicant claims that “while Hatton is in some cases a surname, it is primarily a place name, for numerous locations in Britain originally, and carried over to Britain’s colonies….” Id.

 

The trademark examining attorney respectfully disagrees and maintains that the term “HATTON” has the look and feel of a surname, is not rare, and that the primary significance of “HATTON” is that of a surname.  See attached at http://www.411.com/name/Hatton?q=hatton further establishing the surname significance of “HATTON”.  Further, the attached evidence from the United States Census Bureau shows that the surname “PATTON” appears as one of the top 1000 surnames from the 2010 census.  See http://www.census.gov/topics/population/genealogy/data/2010_surnames.html and File A: Top 1000 names.  Therefore the surname ending “ATTON” is a common derivative of surnames in the United States and thus, the term “HATTON” has the look and feel of a surname. Additionally, applicant’s argument regarding the font size of the letters for the term “HATTON” is irrelevant because applicant has applied for a standard character mark and therefore the mark can appear in any font size. 37 C.F.R. §2.52(a); TMEP §807.03(a). 

 

Moreover, applicant’s argument that the term “HATTON” is primarily a geographic location, rather than a surname, also fails.  The attached evidence from the Columbia Gazetteer of the World shows that the term “HATTON” is merely a town and two villages in the United States. See attached at http://www.columbiagazetteer.org/main/search?name=hatton&search-type=quick.   Thus, 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).  In addition, the mark does not contain any additional terms or design elements that could potentially remove the primary significance of Applicant's mark being that of a surname. 

 

Based on the foregoing, the trademark examining attorney maintains that applicant's mark is primarily merely a surname and the refusal to register applicant's mark under Section 2(e)(4) of the Trademark Act is made FINAL. 

 

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

 

SUPPLEMENTAL REGISTER-ADVISORY

 

The applied-for mark has been refused registration on the Principal Register.  However, a mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for the amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).

 

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.  

 

 

 

Carolyn Wlodarczyk

/Carolyn Wlodarczyk/

Trademark Examining Attorney

Law Office 109

571-272-9273

carolyn.wlodarczyk@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 5/30/2019 FOR U.S. APPLICATION SERIAL NO. 88224036

 

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 5/30/2019 (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.