Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88257352 BAXTON(Standard Characters, see http://uspto.report/TM/88257352/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

            The Examiner has refused registration on the Principal Register because the Examiner believes the mark to be primarily merely a surname. As discussed below, it is believed that not only did the U.S. Patent and Trademark Office fail to meet its burden of showing by clear evidence that the Applicant’s mark is primarily merely a surname, but that Applicant’s mark is, in fact, not primarily merely a surname.

I.          THE MARK IS NOT PRIMARILY MERELY A SURNAME.

            In determining whether a mark is primarily merely a surname, the Trademark Trial and Appeal Board (“Board”) has identified a non-exclusive list of five factors: (1) the degree of the surname’s “rareness”; (2) whether anyone connected with the applicant has the mark as a surname; (3) whether the mark has any recognized meaning other than as a surname; (4) whether the mark has the “look and sound” of a surname; and (5) whether the mark is sufficiently stylized that it would not be perceived as a surname. In re Benthin Mgmt. GmbH (“Benthin”), 37 USPQ2d 1332, 1333-34 (TTAB 1995). The Board made it clear that “[t]here is no rule as to the kind or amount of evidence necessary to show that the applied-for mark would be perceived as primarily merely a surname.” In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016). The question “must be resolved on a case-by-case basis.” Id.

            The burden is initially on the Examiner to establish a prima facie case that a mark is primarily merely a surname. To the extent there is any doubt whether the primary meaning of a term is that of a surname, that doubt should be resolved in favor of the applicant, because the Board is inclined to “pass the mark to publication with the knowledge that others who have the same surname and use it or wish to use it for the same or similar goods or services can file a notice of opposition.” Benthin, 37 USPQ2d at 1334; see In re Joint-Stock Co.“Baik” (“Baik”), 84 USPQ2d 1921, 1924 (TTAB 2007).

            Under the Benthin factors, Applicant respectfully submits that the Examiner has not met the burden to establish that Applicant’s Mark is primarily merely a surname and requests that the Examiner approve the Application for publication and let others “who have the same surname and use it or wish to use it for the same or similar goods or services” oppose if they desire. 37 USPQ2d at 1334.

            A.  “BAXTON” Is A Rare Surname Not Recognized By Consumers.

            In connection with the April 1, 2019 Office Action, the Examiner provided a printout showing that “BAXTON” appears only 250 times as a surname in the LEXISNEXIS ® surname database, a weekly updated directory of cell phone and other phone numbers. Based on these listings of “BAXTON”, and these listings alone, the Examiner concluded that “BAXTON” is not a rare surname. Applicant respectfully disagrees with the Examiner’s determination, and submits that the Examiner’s conclusion is inconsistent with the Board’s prior decisions.

            In In re United Distillers PLC, the Board reiterated its prior statement that “when considering Phonedisc evidence, we recognize the massive scope of that database.” 56 USPQ2d 1220, 1221 (TTAB 2000). It then held that the term HACKLER is a rare surname despite the Examiner’s showing of 1,295 listings from the Phonedisc database and numerous representative excerpts from Nexis articles showing ‘Hackler’ as a person’s surname.” Id. (emphasis added).

            Similarly, in In Re Suphachatwong Innovation Co., Ltd. (“Suphachatwong”), the Board concluded that “[b]y any standard, VEASY is a very rare surname,” even though the Examiner presented 417 listings of VEASY from the LexisNexis Public Records database, and submitted excerpts from the U.S. Census Bureau website showing that VEASY appeared 333 times in the Census 2000 returns and, according to the Examiner, “was in approximately the top 38% in frequency of appearance in the Census 2000 results for all surnames appearing at least 100 times.” 2016 WL 7385766, at *6 (TTAB 2016) (internal quotation marks omitted). The Board emphasized that “[t]he relevant question is not simply how frequently a surname appears, however, but how frequently it has been exposed to the purchasing public as a surname, thereby causing consumers to recognize it as such.” Id. at *7. Noting that the Examiner conceded his evidence did not show “a nationally famous figure with the surname,” the Board agreed with the applicant that the evidence “falls short of showing that VEASY commonly appears in newspapers and other media, or of supporting a finding that individuals having the surname have enjoyed broad exposure to the general public such that ‘Veasy’ is well recognized as a surname.” Id. (internal quotation marks omitted).

            Likewise, here, considering the massive scope of the LEXISNEXIS® surname database, the present Examiner’s evidence of 250 instances of “BAXTON” being used as a surname is actually evidence that “BAXTON” is a rare surname. Given that the United States has a national population of over 323 million, 250 listings establish that only .0000007% of the population of the United States has the surname “BAXTON”.

            In addition, the Examiner has not presented, nor is Applicant aware of, any evidence of a high level of public exposure to “BAXTON” as a surname. There is no “evidence of media attention or publicity of persons” having the surname “BAXTON”, nor has there been any “showing of any widely recognized public personalities” having the surname “BAXTON”. Suphachatwong, 2016 WL 7385766, at *6; see In re Carlo Ferrara SA (“Carlo”), 2017 WL 4154949, at *712 (TTAB 2017) (holding that FERET was not shown to have broad public exposure based on 375 listings in the LEXISNEXIS® surname database and several news reports and online articles because “there is very little evidence of media attention or publicity of persons having that surname”); In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987) (ruling GARAN did not have broad public exposure because there was virtually no media presence except for a single passing reference in a single television news program).

            Therefore, although an extremely small percentage of individuals in the United States may have the surname “BAXTON”, that small number plus the lack of any evidence of high level of public exposure to “BAXTON” as a surname put forth by the Examiner does not “reflect the broad exposure that would place a rarely encountered surname more frequently in the public eye.” Eximius Coffee, 120 USPQ2d at 1281. This factor weighs in favor of Applicant’s favor.

            B.  No One Connected With Applicant Bears “BAXTON” As A Surname.

            None of Applicant’s officers, founders, owners, principals, or anyone otherwise connected with the applicant, have the surname “BAXTON”. Thus, this factor also weighs in Applicant’s favor. See In re Amlin plc (“Amlin”), 2008 WL 4674600, at *2 (TTAB Sept. 30, 2008); Suphachatwong, 2016 WL 7385766, at *3.

            C.  Since “BAXTON” Is A Rare Surname, the “BAXTON” mark Appears to Have Non-Surname Meaning As A Coined Term or A Combination of Unknown Surnames.

            Applicant acknowledges that “BAXTON” does not have any non-surname meaning. However, the Board has held that “[w]hile a significant non-surname meaning usually helps the position of an applicant . . . the converse (i.e., a determination that the involved term does not have any non-surname meaning) does not help significantly the position of the Trademark Examiner.” Amlin, 2008 WL 4674600, at *3 (emphasis added) (reversing the USPTO’s surname refusal to register AMLIN after determining that “Amlin” is “an extremely rare surname;” no evidence in the record shows association between the applicant and someone with the surname “Amlin;” “Amlin” does not have a non-surname meaning; and the mere fact that the rare surname at issue has some similarity in structure and pronunciation to another, more common surname is insufficient).

            Nevertheless, although “BAXTON” does not have a recognized non-surname meaning, the mark is likely to be recognized as a coined term. The mark is more likely to be recognized as a coined term than to be perceived as a surname because, as mentioned, the surname “BAXTON” is rare and lacks public exposure and thus the purchasing public is not likely to recognize “BAXTON” as a surname. Applicant intends to offer goods under the “BAXTON” mark in the field of mobile surveillance and communications systems. See [Ex. A, printout of Applicant’s BTU Research website, Coming Soon, http://bturesearch.com/coming-soon/, accessed and printed on Sep. 23, 2019].

            It is also possible that purchasing consumers would consider the Applicant’s “BAXTON” mark to be a combination of two unknown surnames. For example, the combination of the common surname “Baxter” with “Hilton” or “Tonder”. A combination of two surnames is not primarily merely a surname within the meaning of §2(e)(4), unless evidence is presented showing that the combination would be perceived by the public as merely a surname. See Application of Standard Elektrik Lorenz Aktiengesellschaft, 54 C.C.P.A. 1043, 371 F.2d 870, 152 USPQ 563 (1967), where it was held that the proposed mark SCHAUB-LORENZ was not primarily merely a surname. The Court noted that there was no evidence submitted that the mark as a whole was merely a surname. Although some evidence was put forth to demonstrate that the individual terms “SCHAUB” and “LORENZ” had surname significance, the Court insisted that the mark be considered as a whole and not dissected. Similar to the Standard Elektrik case, the Applicant’s “BAXTON” mark should be considered as a whole and not dissected. As such, under the application of applicable case law, the “BAXTON” mark is not merely a surname.

            Thus, considering the rarity and lack of public exposure of the surname “BAXTON”, the public is more likely to perceive “BAXTON” as a coined term than to think of “BAXTON” as a sole surname. See United Distillers, 56 USPQ2d at 1221 (stating that the question of whether the purchasing public considers a term primarily merely a surname needs to be evaluated in connection with the particular product or service offered under the term). Further, even if the mark “BAXTON” is not considered coined by purchasing consumers, such consumers would likely conclude that the mark is a combination of two unknown surnames.

            Thus, although “BAXTON” does not have a recognized non-surname meaning, the public is likely to view this term as a coined term or as a combination of two unknown surnames. This factor, again, weighs in favor of Applicant’s position.

            D.  “BAXTON” Does Not Have The Structure And Pronunciation Of A Surname.

            Applicant respectfully submits that the Examiner has not met the burden in proving that the public would perceive “BAXTON” as a surname due to the term’s structure and pronunciation. As noted above, the term “BAXTON” is indeed a rare surname. In Baik, the Board noted generally that this factor should not weigh against terms that are rare surnames:

Because the purpose of Section 2(e)(4) is not to protect the public from being exposed to surname marks, the fact that the public may view a mark as a surname because it has the "look and feel" of a surname should not be the basis for refusing registration of rare surnames. If a surname is extremely rare, it is also extremely unlikely that someone other than the applicant will want to use the surname for the same or related goods or services as that of the applicant.

Id., 84 USPQ2d at 1924. Due to extreme rarity of the term as a surname, and therefore the unlikeness that the public will consider “BAXTON” to be a surname, this factor should not weigh against Applicant.

            The Board has recognized that arguments regarding the structure and pronunciation of surnames are “highly subjective,” and has repeatedly asked for “objective evidence” to prove that consumers will perceive a mark to be similar in structure and sound to other common surnames. See e.g., Carlo, 2017 WL 4154949, at *9 (“More objective evidence of how members of the public would perceive the structure and sound of FERET and whether they would be likely to perceive it as similar to the structure and sound of other surnames, common words or coined terms, is required.”).

            As stated above, the term “BAXTON” is a rare surname (250 Listings). Since consumers would very likely not know of any person who bears such a surname, the consumer is likely to conclude that the “BAXTON” is either a coined term or a combination of two unknown common surnames. The term “BAXTON” consists of two syllables: “BAX” and “TON”. As such, to reach any connection with a singular surname, a consumer would have to guess as to the two full surnames contained in the mark. As such, the term “BAXTON” is not merely a surname as defined under Trademark Act Section 2(e)(4).

            Therefore, Applicant submits that the purchasing public is not likely to perceive “BAXTON” as having the structure and pronunciation of a surname and thus this factor weighs in Applicant’s favor.

            E.  The Impact Of “BAXTON” On The Purchasing Public Is Not One Of Surname Significance.

            The last Benthin factor for evaluating a surname refusal is whether the mark at issue is sufficiently stylized that it would not be perceived as a surname. 37 USPQ2d at 1334. When the mark at issue is in standard character form with no other literal or design elements, the Board “consider[s] the impact the applied-for term has or would have on the purchasing public because it is that impact or impression which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname.” Eximius Coffee, 120 USPQ2d at 1278 (internal quotation marks omitted). As stated more fully above, Applicant respectfully submits that the impact “BAXTON” has on the purchasing public is not one of surname significance, but instead, again, one of a coined term or of a combination of two unknown surnames. In either event, Applicant’s mark has significance other than that of a surname.

            As such, Applicant submits that, considering the context in which the mark “BAXTON” is and would be encountered by the purchasing public, this factor also weighs in favor of Applicant’s position.

II.        CONCLUSION.

            In conclusion, the above analysis of the Benthin factors shows that the purchasing public would not perceive the mark “BAXTON” as primarily merely a surname. Based on the reasons above, Applicant respectfully disagrees with the Examiner’s assessment that “BAXTON” is primarily merely a surname, submits that the application is in the proper condition for publication, and requests action consistent therewith at an early date.

EVIDENCE
Evidence in the nature of Ex.A_BAXTON_Website_Sep_23_2019 has been attached.
Original PDF file:
evi_17311198217-20190923163636098968_._Ex.A_BAXTON_Website_Sep_23_2019.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

The applicant's current attorney information: Andrew W. Chu and L. Jeremy Craft. Andrew W. Chu and L. Jeremy Craft of CRAFT CHU PLLC, is located at

      1204 Heights Boulevard
      Houston, Texas 77008-6918
      US
The docket/reference number is 400/25.

The phone number is 713-802-9144.

The fax number is 8667077596.

The email address is trademark@craftchu.com

The applicants proposed attorney information: Andrew W. Chu and L. Jeremy Craft. Other appointed attorneys are L. Jeremy Craft. Andrew W. Chu and L. Jeremy Craft of CRAFT CHU PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1204 Heights Boulevard
      Houston, Texas 77008-6918
      United States
The docket/reference number is 400/25.

The phone number is 713-802-9144.

The fax number is 8667077596.

The email address is trademark@craftchu.com

Andrew W. Chu and L. Jeremy Craft submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: ANDREW W. CHU AND L. JEREMY CRAFT. ANDREW W. CHU AND L. JEREMY CRAFT of CRAFT CHU PLLC, is located at

      1204 Heights Boulevard
      Houston, Texas 77008-6918
      US
The docket/reference number is 400/25.

The phone number is 7138029144.

The fax number is 8667077596.

The email address is trademark@craftchu.com; mail@craftchu.com

The applicants proposed correspondence information: Andrew W. Chu and L. Jeremy Craft. Andrew W. Chu and L. Jeremy Craft of CRAFT CHU PLLC, is located at

      1204 Heights Boulevard
      Houston, Texas 77008-6918
      United States
The docket/reference number is 400/25.

The phone number is 713-802-9144.

The fax number is 8667077596.

The email address is trademark@craftchu.com; mail@craftchu.com

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /400/25/      Date: 09/23/2019
Signatory's Name: L. Jeremy Craft
Signatory's Position: Attorney of record, Texas bar member
Signatory's Phone Number: 7138029144


Response Signature
Signature: /400/25/     Date: 09/23/2019
Signatory's Name: L. Jeremy Craft
Signatory's Position: Attorney of record, Texas bar member

Signatory's Phone Number: 7138029144

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    ANDREW W. CHU AND L. JEREMY CRAFT
   CRAFT CHU PLLC
   
   1204 Heights Boulevard
   Houston, Texas 77008-6918
Mailing Address:    Andrew W. Chu and L. Jeremy Craft
   CRAFT CHU PLLC
   1204 Heights Boulevard
   Houston, Texas 77008-6918
        
Serial Number: 88257352
Internet Transmission Date: Mon Sep 23 16:42:34 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201909231642343
89484-88257352-610d7949f54c66c94a912a7ca
a3854d1b73762a9688b40bc1349ace180a72aca6
5-N/A-N/A-20190923163636098968