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: 4/3/2019

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the following issues outlined below:

 

1)    Section 2(e)(4) Refusal—Surname and

2)    Disclaimer Required.

 

15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.  Applicant should also note the advisories stated in this Office action.

 

Search of the Office Records

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).

 

1) Section 2(e)(4) Refusal—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 present application is for use of the mark “SHAN AUTOMATICS” (standard characters) with the goods “Artificial hearts and parts thereof; Robotic arms for use by mobility-impaired individuals; Robotic exoskeleton suits for medical purposes; Sex dolls; Medical robots for use in cognitive therapy for children; Medical robots with attached spoons for assisting physically disabled persons with eating; Medical apparatus, namely, blood pump system for use in artificial liver support; Medical apparatus, namely, system for use in artificial organ support; Medical devices, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time; Surgical robots” in International Class 10.

 

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). 

 

Please see the attached evidence from LEXISNEXIS®, establishing the surname significance of Shan.  This evidence shows the applied-for mark appearing over 4,000 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.  Thus, the mark appears to be a surname. Although “SHAN” appears to be a relatively rare surname, the 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).

 

The applicant also has the surname “SHAN”, which ways in favor of finding the mark to be a surname. A term that is the surname of an individual applicant or that of an officer, founder, owner, or principal of applicant’s business is probative evidence of the term’s surname significance.  TMEP §1211.02(b)(iv); see, e.g., In re Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ 652, 653 (Fed. Cir. 1985) (holding DARTY primarily merely a surname where “Darty” was the surname of applicant’s corporate president); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-80 (TTAB 2016) (holding ALDECOA primarily merely a surname where ALDECOA was the surname of the founder and individuals continuously involved in the business); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (holding BARR GROUP primarily merely a surname where BARR was the surname of the co-founder and applicant’s corporate officer and GROUP was found “incapable of lending source-identifying significance to the mark”); Miller v. Miller, 105 USPQ2d 1615, 1620, 1622-23 (TTAB 2013) (holding MILLER LAW GROUP primarily merely a surname where “Miller” was the surname of the applicant and the term “law group” was found generic).

 

These inquiries listed above 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. Given that evidence exists that the term is a surname and that is the surname of the individual applicant, the term “SHAN” is primarily, merely a surname in the present case.

 

The addition of the term “AUTOMATICS” does not lessen the surname significance of the overall mark. 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). 

 

Specifically, the term “AUTOMATICS” refers to machines or devices that operate independent of external influence or are self-regulating. Please see attached definition from http://www.ahdictionary.com/word/search.html?q=automatic.  In the context of the applicant’s goods, the term merely describes the fact that goods operate independent of outside control. Thus, the term is highly descriptive of a feature of the goods and does not lessen the overall surname significance of the mark.

 

Accordingly, registration is refused on the Principal Register. Although registration has been refused, the applicant may present arguments and evidence in support of registration.  If applicant responds to this refusal, then the applicant must also respond to any other refusals or requirements stated in this Office action. 

 

Advisory—Section 1(b) Application and Supplemental Register

Although an amendment to the Supplemental Register would normally be an appropriate response to this surname refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends 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 an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)       Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)       Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)       Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)       Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)       Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

2) Disclaimer Required

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “AUTOMATICS” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

As discussed above, the term “AUTOMATICS” refers to machines or devices that operate independent of outside influence or control and/or self-regulating. In the context of the applicant’s goods, the term is merely descriptive of a feature of the good and must be disclaimed.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “AUTOMATICS” apart from the mark as shown. 

 

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 is also advised that, if an acceptable allegation of use and an amendment to the Supplemental Register are filed, applicant will be required to disclaim “AUTOMATICS” because such wording appears to be generic in the context of applicant’s goods and/or services.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).

 

Advisory—Applicant May Wish to Seek Counsel

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Response Guidelines

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. 

 

 

 

/Marilyn Izzi Vengroff/

Trademark Examining Attorney

Law Office 112

(571) 270-1523 (phone)

(571) 270-2523 (fax)

marilyn.vengroff@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 4/3/2019 FOR U.S. APPLICATION SERIAL NO. 88258329

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking 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)  Respond within 6 months (or sooner if specified in the Office action), calculated from 4/3/2019, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  A response transmitted through TEAS must be received before midnight Eastern Time of the last day of the response period.

 

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. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Marilyn Izzi Vengroff/

Trademark Examining Attorney

Law Office 112

(571) 270-1523 (phone)

(571) 270-2523 (fax)

marilyn.vengroff@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.