To: | Biltwell Custom Motorcycle Corp (Jeana@SchottLawGroup.com) |
Subject: | U.S. Trademark Application Serial No. 88268789 - BELDEN - N/A |
Sent: | October 31, 2019 02:24:00 PM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88268789
Mark: BELDEN
|
|
Correspondence Address:
|
|
Applicant: Biltwell Custom Motorcycle Corp
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: October 31, 2019
This Office action is in response to applicant’s communication filed on October 16, 2019.
In a previous Office action(s) dated October 3, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(4) for being primarily merely a surname and for the mark on the drawing and the specimen differing.
Based on applicant’s response, the trademark examining attorney notes that the following refusal has been obviated: refusal for the mark on the drawing and the specimen differing. See TMEP §§713.02, 714.04.
The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Section 2(e)(4) Refusal – Primarily MERELY A SURNAME REFUSAL
Registration remains 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.
An applicant’s mark is primarily merely a surname if the surname “‘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.
(1) Please see the previously attached evidence from LexisNexis, establishing the surname significance of “BELDEN.” This evidence shows the applied-for mark appearing 5,775 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. Furthermore, the attached evidence from Surname DB shows the origin of the surname “BELDEN”, stating that it is an English locational surname.
(3) The previously attached evidence from American Heritage Dictionary shows that the term “BELDEN” has no known dictionary meaning.
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). Thus, this term appears to have no recognized meaning or significance other than as a surname.
(4) The attached evidence from Forbears shows the significant number of similar looking and sounding surnames, which shows that the mark does have the look and feel of a surname. According to the attached evidence, 2,332 people have the surname “Welden”, and 2,764 people have the surname “Belding”. These surnames are almost identical to the surname “BELDEN”. The surname Welden merely has the letter “w” in place of the letter “b”, and the surname “Belding” merely replaces the suffix “en” with the suffix “ing”.
(5) The last consideration regarding stylization does not apply because this mark appears in standard characters without any design or stylization.
Based on the evidence and analysis above, applicant’s applied-for mark is primarily merely a surname and must be refused under Section 2(e)(4) of the Lanham Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
ADVISORY: SUPPLEMENTAL REGISTER
Although an amendment to the Supplemental Register would normally be an appropriate response to this 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.
If applicant amends the application to seek registration on the Supplemental Register, the application effective filing date will be the date applicant meets the minimum filing requirements under 37 C.F.R. §2.88(c) for a statement of use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).
RESPONSE TO ARGUMENTS
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
Next, applicant argues it has no connection to the surname “BELDEN”. It argues that the applied-for mark is a brand name for motorcycle gloves and is not a surname of anyone known or connected to applicant and/or applicant’s family and friends. However, as previously discussed, the fact that “a proposed mark is not applicant’s surname, or the surname of an officer or employee, does not tend to establish one way or the other whether the proposed mark would be perceived as a surname.” In re Thermo LabSystems Inc., 85 USPQ2d 1285, 1287 (TTAB 2007) (quoting In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004)); see In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1724 (TTAB 2016). In a surname analysis, the absence of a person connected with applicant that has this term as a surname is a neutral factor. In re Thermo LabSystems Inc., 85 USPQ2d at 1287.
Furthermore, applicant argues that “BELDEN” has meanings, as it is also the name of a remote location where Biltwell customers take their motorcycles for fun gatherings. The existence of other non-surname meanings of a mark does not preclude the mark from being held primarily merely a surname. Miller v. Miller, 105 USPQ2d 1615, 1620-21 (TTAB 2013); see In re Harris-Intertype Corp., 518 F.2d 629, 631, 186 USPQ2d 238, 239 (C.C.P.A. 1975); In re Hamilton Pharms. Ltd., 27 USPQ2d 1939, 1942 (TTAB 1993). The issue is not whether a mark that has surname significance might also have a non-surname significance, but whether, in the context of an applicant’s goods or services, the non-surname significance is the mark’s primary significance to the purchasing public. Miller v. Miller, 105 USPQ2d at 1621; see In re Harris-Intertype Corp., 518 F.2d at 631, 186 USPQ2d at 239; In re Hamilton Pharms. Ltd., 27 USPQ2d at 1942. Additionally, 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).
Finally, as evidence against the refusal, applicant has provided screen shots in Exhibit A that do not specify the date it was downloaded or accessed. To properly introduce Internet evidence into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed, and (3) the complete URL address of the webpage. See In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018); TBMP §1208.03; see TMEP §710.01(b). Accordingly, these webpages will not be considered.
Thus, because applicant’s arguments are not persuasive, the Section 2(e)(4) refusal for being primarily merely a surname is maintained and made FINAL.
ASSISTANCE
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.
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.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
/Megan Mischler/
Trademark Examining Attorney
Law Office 127
(571) 272-9997
megan.mischler@uspto.gov
RESPONSE GUIDANCE