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: 3/30/2019

 

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.

 

The examining attorney respectfully advises applicant that this Office Action contains the following refusal(s)/requirement(s) summarized immediately below and further explained within the body of this Office Action.

 

SUMMARY OF ISSUES that applicant must address:

 

• LIKELIHOOD OF CONFUSION REFUSAL -- applicant must respond to the examining attorney’s refusal to register the proposed mark because of a likelihood of confusion with the cited registered mark(s).

 

• SURNAME REFUSAL - applicant must respond to the examining attorney’s refusal to register the proposed mark because the applied-for mark, BUELL, is primarily merely a surname. 

 

 

 

SUMMARY OF ADVISORIES:

 

• POTENTIAL ADDITIONAL LIKELIHOOD OF CONFUSION REFUSAL -- applicant is advised that the trademark examining attorney has searched the USPTO's database of registered and pending marks and has also found a mark in a prior-filed pending application that may present a bar to registration of applicant's mark under Trademark Act Section 2(d). 

 

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

• The stated refusal refers to International Class 12 only and does not bar registration in the other class.

 

 

Registration of the applied-for mark, BUELL in standard characters, is refused because of a likelihood of confusion with the mark, BUELL AIR HORNS in U.S. Registration No. 5174727 in standard characters with a disclaimer of “AIR HORNS”. 

 

Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Legal Standard

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services.  Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1938 (TTAB 2013) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v).  Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).

 

 

Analysis

 

Comparison Of The Marks

 

In the present case, applicant’s mark consists of the literal element BUELL in standard characters.  The cited registration mark, BUELL AIR HORNS in U.S. Registration No. 5174727 in standard characters with a disclaimer of “AIR HORNS” consists of the same dominant element (BUELL) as appears in the applicant’s mark. 

 

The identical, dominant element in both marks is also the first term: “BUELL”. 

 

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

 

 

The remaining wording, “AIR HORNS”, in the cited mark is merely descriptive of the goods and is disclaimed. 

 

 

Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

 

 

As to similarities in the appearance of the marks, both marks appear in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

 

Comparison Of The Goods

 

• The stated refusal refers to International Class 12 only and does not bar registration in the other class.

 

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

 

In the present case, applicant’s mark BUELL is for use on or in connection with (as to relevant goods highlighted in bold):

 

“Motorcycles and structural parts therefor; racing motorcycles and structural parts therefor” in Class 12; and  

 

 

“Apparel and headwear, namely, jackets, leather jackets, textile jackets, motorcycle jackets; motorcycle suits; fleece tops; sweatshirts; hooded sweatshirts; shirts, namely, woven shirts, dress shirts, long and short-sleeved t-shirts, sleeveless shirts, moisture-wicking shirts, golf shirts; uniforms; hats, namely, beanies, baseball caps” in Class 25

 

 

The cited registration mark, BUELL AIR HORNS in U.S. Registration No. 5174727, is for use on or in connection with “Horns for motor cars; Horns for vehicles; Amplified horns, namely, horns for locomotives; Warning horns for automobiles” in Class 12. 

 

 

Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Also, the trademark examining attorney refers to the excerpted materials from the Google search engine in which motorcycles and motorcycle parts appeared in reference to air horns.  See attachments.

 

For example, see:

 

 

Wolo (419) Bad Boy Air Horn - 12 Volt 

 

 by  Wolo  

 

 

 Only 10 left in stock - order soon.  

 

 

List Price:  List Price:$49.99 

Price:  Price:$27.56 

You Save:  You Save:$22.43 (45%) 

 

 "Nice and loud"  - by  Dennis Hart   (usa) 

 

 I bought 2 of these horns. One for a scooter and one for a Honda Goldwing. For the scooter, because of space constrictions I had to separate the air pump from the horn and mount each piece in a separate location and reconnect with vacuum line after adding a hose barb to each piece. Goldwing install mounted great. I mounted it behind and above front wheel fender in front of the radiator in the blank space between radiator halves as far up as I could. I have it turned vertical with horn opening on the bottom facing forward and it blocks very minimal air flow. I had to epoxy 2 strips of stiff closed cell foam to the horn, 1 above and 1 below the round chrome looking piece so that the back was flush and kept pressure off of round piece.Then I used heavy duty zip ties around ... full review

http://www.amazon.com/slp/motorcycle-air-horn/nzxx94g2mz2k5qd

 

 

 

Stebel 11690019 - Nautilus Compact Mini Air Horn Black 

 

 by  Stebel  

 

 

 In Stock.  

 

 

Price:  Price:$27.99 

 

 "Great Horn for any vehicle"  - by  Michael W. Lamb   (Kansas City) 

 

 The Stebel compact Nautilus is a great addition to any vehicle. This is my second such horn. The first was mounted on a Honda VTX and it really got the attention of distracted drivers when they drift into my lane. The Nautilus is MUCH louder than the wimpy stock horn. I purchased a second horn for another bike, but could not find a good spot to mount it. Although this is the compact version of the Nautilus, it is still much larger than a stock motorcycle horn. Be sure you have room on your bike before you buy.

http://www.amazon.com/slp/motorcycle-air-horn/nzxx94g2mz2k5qd

 

 

 

 

Can You Mount Train Horns on a Hog?

 

Have you ever thought of installing train horns in your motorcycle? Honk and get noticed by installing these super loud train horns in your motorcycle. These high-quality train horns are available for bikes, trikes, cars, and trucks. No matter what kind of vehicle you own, you will always find the right train horns for your vehicle. In fact, motorcycle owners can always replace the wimpy bike horns with these loud train horns. Buying these horns is easy as many stores including a number of online stores now offer several choices of train horns. If you browse through online stores, you will find big brands of train horns for motorbikes, trucks, and cars. A number of websites, particularly meant for train horns, also offer seasonal sales, free shipping on orders, and discounts on train horns. With such options available, you really don’t have to look elsewhere.

http://trainhorns.us/articles/train-horns-for-motorcycles/

 

Material obtained from the Internet is generally accepted as competent evidence in trademark examination.  See In re Jonathan Drew Inc., 97 USPQ2d 1640, 1641-42 (TTAB 2011); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009); In re Leonhardt, 109 USPQ2d 2091, 2098 (TTAB 2008); TBMP §1208.03; TMEP §710.01(b).

 

 

A determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); TMEP §1207.01(a)(iii).  If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

 

Conclusion

 

Accordingly, the applicant’s proposed mark, BUELL, is refused for likelihood of confusion under Trademark Act Section 2(d).

 

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

 

 

RESPONSE OPTIONS TO SECTION 2(d) REFUSAL

 

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the class to which the refusal pertains;

 

(2)  Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition/registration in the class to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)  Amending the basis for that class, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

 

Request to Divide Option

 

In response to a refusal or requirement that pertains only to certain classes, goods, and/or services, an applicant may divide the application into two or more separate applications so that any acceptable classes, goods, and/or services may be transferred to the divided out application(s) and proceed toward registration.  See 37 C.F.R. §2.87; TMEP §1110 et seq.  Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application.  See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).

 

To divide an application, file a request to divide online using the Trademark Electronic Application System (TEAS) form and include a fee of $100 for each new application created.  See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04.  If dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division.  37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.

 

 

 

Applicant should note the following additional ground for refusal.

 

 

 

 

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

 

Registration is refused because the applied-for mark, BUELL, 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 Etablissements Darty et Fils, 759 F.2d 15, 17-18, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); see TMEP §§1211, 1211.01.

 

Please see the attached evidence from an internet search using the online WhitePages website conducted at the USPTO on March 30, 2019, establishing the surname significance of the surname BUELL.  This evidence shows the proposed mark appearing over 734,140 times as a surname in a nationwide telephone directory of names. 

 

Please see:

 

http://www.whitepages.com/name/Buell?q=buell

 

 

 

Legal Standard

 

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.

 

In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995); TMEP §1211.01.

 

 

Analysis

 

“There is no rule as to the kind or amount of evidence necessary to show that [a] mark would be perceived as primarily merely a surname.”  In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 (TTAB 2016); see TMEP §1211.01.  Each case is decided on its own facts, based on the evidence of record.  TMEP §1211.01; see In re Eximius Coffee, LLC, 120 USPQ2d at 1278 (citing In re Etablissements Darty et Fils, 759 F.2d 15, 17, 225 USPQ 652, 653 (Fed. Cir. 1985)). 

 

The following are examples of evidence that is generally considered to be relevant to such a determination:  telephone directory listings, excerpted listings and articles from computerized research databases, applicant’s website, evidence in the application record showing the term used as a surname, the manner of use on specimens, dictionary definitions of the term and evidence from dictionaries showing no definition of the term.  See TMEP §1211.02(b)(i)-(b)(iii), (b)(v)-(b)(vi).

 

Evidence that a term has the structure and pronunciation of a surname may contribute to a finding that the primary significance of the term is that of a surname.  In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); see In re Giger, 78 USPQ2d 1405, 1409 (TTAB 2006); In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004); TMEP §1211.01(a)(vi).

 

See, for example:

 

Buell is a surname. Notable people with the surname include:

Abel Buell (1742–1822), goldsmith and counterfeiter in the American colonies

Alexander H. Buell (1801–1853), New York politician, U.S. congressman

Augustus Caesar Buell (1847–1904), American author of several plagiarized and fabricated biographies

Bebe Buell (born 1953), American fashion model and singer

Caroline Brown Buell (1843-1927), American activist

Dai Buell (died 1939), American pianist and teacher

Don Carlos Buell (1818–1898), Union general during the American Civil War

Erik Buell (born 1950), motorcycle racer and designer

Lawrence Buell (born 1939), professor at Harvard, specializing in ecocriticism and Ralph Waldo Emerson

Marjorie Henderson Buell (Marge (cartoonist), 1904–1993), American cartoonist publishing under the pen name "Marge"

Murray Fife Buell (1905–1975), American plant ecologist

Ryan Buell (born 1982), American paranormal investigator

Susie Tompkins Buell, Entrepreneur and liberal donor

William M. Buell (1810–1869), California politician

 

Fictional characters:

Judge Buell, character in the Judge Dredd comic strip

 

http://en.wikipedia.org/wiki/Buell_(surname)

 

Articles from the online Wikipedia® encyclopedia may be used to support a refusal or requirement, provided that an applicant has an opportunity to rebut such evidence.  See In re Hinton, 116 USPQ2d 1051, 1053 n.10 (TTAB 2015); TBMP §1208.03; TMEP §710.01(b).

 

Evidence that a term has no recognized meaning or significance other than as a surname is relevant to determining whether the term would be perceived as primarily merely a surname.  See In re Weiss Watch Co., 123 USPQ2d 1200, 1203 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB 2016); TMEP §1211.02(b)(vi).  The attached evidence from Columbia Gazetteer shows that BUELL does not appear in the gazetteer.  Thus, this term appears to have no recognized meaning or significance other than as a surname. 

 

 

 

The term does not appear as a geographical term:

 

http://www.columbiagazetteer.org/main/search?name=buell&search-type=quick

 

Also see:

 

If at first you don't succeed, try, try again...and again, and again. That's presumably the mantra driving the fourth incarnation of EBR (Erik Buell Racing) Motorcycles which is returning yet again, this time with no affiliation with Erik Buell whatsoever-other than his name. The dream of the American superbike just refuses to die.

 

Quick history lesson: Buell started out in East Troy, Wisconsin in 1983 as a brand of American sport bikes founded by former Harley engineer and motorcycle innovator Erik Buell. Buell made a name for itself by building unique, performance-oriented motorcycles that weren't like anything you could get from any other American motorcycle brand nor, arguably, the whole motorcycle industry. It became a wholly owned subsidiary of Harley-Davidson in 2003 and was mismanaged into the ground around the time of the Great Recession.

 

But that was far from the end of the line for Buell. The brand's namesake brought it back as an independent company called EBR in 2010 and started out building race bikes and eventually street bikes including the 1190RX sport bike and the 1190SX streetfighter, all of which were based on the same 1190 platform and V-twin engine. EBR saw moderate success in the AMA Superbike Championship and has the distinction of being the first American OEM to earn points in the FIM Superbike World Championship.

 

http://www.thedrive.com/motorcycles/25366/ebr-motorcycles-is-back-at-it-once-again-but-in-very-limited-capacity

 

 

Also see:   US Registration Number 5154755 for the mark, ERIK BUELL RACING (where the registrant in that case is the same applicant in the present case) and which states that “The name(s), portrait(s), and/or signature(s) shown in the mark identifies "Erik Buell", whose consent(s) to register is made of record.”

 

There is no rule as to the kind or amount of evidence necessary to make out a prima facie showing that a term is primarily merely a surname.  This question must be resolved on a case-by-case basis.  TMEP §1211.02(a); see, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., 230 USPQ 79 (TTAB 1986).  The entire record is examined to determine the surname significance of a term.  The following are examples of evidence that is generally considered to be relevant:  telephone directory listings, excerpted articles from computerized research databases, evidence in the record that the term is a surname, the manner of use on specimens, dictionary definitions of the term and evidence from dictionaries showing no definition of the term.  TMEP §1211.02(a).

 

 

The issue of determining whether a surname is common or rare is not determined solely by comparing the number of listings of the surname in a computerized database with the total number of listings in that database, because even the most common surname would represent only a small fraction of such a database.  Rather, if a surname appears routinely in news reports, articles and other media as to be broadly exposed to the general public, then such surname is not rare and would be perceived by the public as primarily merely a surname.  In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004); see TMEP §1211.01(a)(v). 

 

 

Conclusion

 

In view of the foregoing, the primary significance of BUELL is primarily merely that of a surname, and registration on the Principal Register is therefore refused under Section 2(e)(4) of the Trademark Act. 

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

 

 

 

RESPONSE OPTIONS TO SECTION 2(e)(4) REFUSAL

 

 

A mark deemed primarily merely a surname may be registered on the Principal Register under Trademark Act Section 2(f) based on a claim of acquired distinctiveness.  See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1211, 1212.  Applicant may respond by asserting a claim of acquired distinctiveness based on one or more of the following:

 

(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). _______ 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).

 

 

Supplemental Register (Information Advisory)

 

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).

 

 

 

Applicant should note the following potential additional ground for refusal.

 

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has also found a mark in a prior-filed pending application that may present a bar to registration of applicant’s mark under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d). 

 

Prior-Filed Pending Application

 

The filing date of pending U.S. Application Serial No. 88129940 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

 

 

RESPONSE GUIDELINES

 

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. 

 

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

 

 

 

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.  

 

 

 

/Ronald E. DelGizzi/

Trademark Examining Attorney

Law Office 107

Phone - (571) 272-2754

ronald.delgizzi@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 3/30/2019 FOR U.S. APPLICATION SERIAL NO. 88262859

 

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 3/30/2019 (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.