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. 88297626 SARACO(Standard Characters, see http://uspto.report/TM/88297626/mark.png) has been amended as follows:

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

RESPONSE

            This is in response to the Office Action dated April 29, 2019.  Reconsideration of this Application is respectfully requested in view of the following remarks.

 

REMARKS

            In the Office Action, the Examining Attorney raised an initial refusal, requesting revisions to the recitation of Applicant’s goods.  Applicant has complied with this request.

            Also in the Office Action, the Examining Attorney preliminarily refused registration of the SARACO mark under Section 2(e)(4) of the Trademark Act on the grounds that the SARACO mark is allegedly primarily merely a surname. A term is considered to be primarily merely a surname if, when applied to a particular product, its primary significance to the purchasing public is that of a surname. In re United Distillers plc., 56 USPQ2d 1220, 1221 (TTAB 2000).

            Five factors should be considered in making this determination: (1) whether the surname is rare (see TMEP §1211.01(a)(v)); (2) whether the term is a surname of anyone connected with the applicant (see TMEP §1211.02(b)(iv)); (3) whether the term has any recognized meaning other than as a surname (see TMEP §§1211.01(a) et seq.); (4) whether it has the “look and feel” of a surname (see TMEP §1211.01(a)(vi)); and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression (see TMEP §1211.01(b)(ii)).  In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995).

            Overall, the Examining Attorney must consider the impact the applied-for term has or would have on the purchasing public. In re Harris-Intertype Corp., 518 F.2d 629, 631 (C.C.P.A. 1975).

            In this case, an analysis of the relevant factors reveals that the SARACO mark is not primarily merely a surname, and each will be addressed below in turn.   

           

A.        SARACO is an Extremely Rare Surname.

            The rarity of a surname is considered in determining whether a term is primarily merely a surname. See TMEP §1211.01(a)(v). In fact, in certain cases, the rarity of the surname may be the most substantial factor. In re Okamoto, 2015 TTAB LEXIS 301, at * 12-13 (Feb. 6, 2015) [non-precedential] (finding that the rarity of the surname was “of particular importance in [the Board’s] weighing of the factors”). Based on the facts and on precedent, the use of Applicant’s Mark as a surname appears to be exceedingly rare.

            The Board has found that surnames which are far more commonly used than Applicant’s Mark are rare. See, e.g., In re United Distillers plc., 56 USPQ2d at 1221 (finding that the surname HACKLER was rare when evidence showed nearly 1,300 listings in telephone directories); In re Okamoto, 2015 TTAB LEXIS at *5 [non-precedential] (finding the surname OKAMOTO is “relatively rare” when evidence showed more than 700 listings in telephone directories). In this case, the Examiner identified 128 listings in a surname database. The Board has repeatedly found that surnames which have a similar number of references are “rare.” See In re Sava Research Corp., 32 U.S.P.Q.2d 1380, 1381 (TTAB 1994) (finding that the name SAVA was rare and, therefore, registrable because a search of a database of more than 90 million phone numbers showed approximately 100 references in the U.S.); In re Benthin Management GmbH, 37 USPQ2d at 1333 (finding that a database of phone numbers for more than 76 million people  showed more than 100 listings for BENTHIN, or a ratio of one in three-quarters of a million, suggesting the term was a rare surname).    

            In fact, the SARACO name is far more rare than the designations in In re Sava Research Corp. and In re Benthin Management GmbH. Here, the Examining Attorney submitted into the record the results of the LexisNexis Surname database, which contains over 1 billion telephone records in the United States. This is over twelve times the number of listings in the database used by the Examining Attorney in In re Benthin Management GmbH, 37 USPQ2d at 1333. The LexisNexis Surname database only revealed 128 listings of individuals with the surname SARACO out of the more than 1 billion references. Thus, based on the database, only 1 in 7,812,500 people in the United States have the last name SARACO. This ratio is far lower than both the 1 in 750,000 ratio referenced in In re Benthin Management GmbH, id., and the 1 in 900,000 ratio referenced in In re Sava Research Corp., 32 U.S.P.Q.2d at 1381. Given the extreme rarity of the SARACO designation as a surname, it seems unlikely that the purchasing public would view this designation to be primarily a surname. Thus, this factor appears to be dispositive, or at the very least weighs strongly in Applicant’s favor.

 

B.        SARACOis Not Likely to be Perceived as Primarily Merely a Surname When Applied to Applicant’s Goods.  

            Where there is a readily recognized meaning of a term, apart from its surname significance, such that the primary significance of the term is not that of a surname, registration should be granted on the Principal Register without evidence of acquired distinctiveness. See In re Isabella Fiore LLC, 75 U.S.P.Q.2d 1564, 1570 (TTAB 2005).

            In this case, the primary significance of SARACO is that of the Applicant’s trademark.  This is largely because the vast majority of people are not likely to even recognize the term SARACO as being a surname because it is so rare.  Thus, in this context, the mark is arbitrary and consumers will perceive it as so. Since the primary significance of SARACO is not that of a surname, registration should be granted on the Principal Register. Accordingly, this factor also tilts in favor of Applicant.

 

C.        SARACO Does Not Have the “Look and Feel” of a Surname.

            There is a category of surnames that are so rare that they do not even have the appearance of surnames. In re United Distillers plc., 56 USPQ2d at 1222 (HACKLER does not have the look and feel of a surname). Indeed, SARACO belongs in such a category, and the purchasing public will perceive Applicant’s mark SARACO as arbitrary or fanciful in connection with a mark for precious metals, jewelry, watches, and horological and chronometric instruments. 

            Most notably, the mark SARACO ends in the letters “CO,” which are commonly appended to company names to denote the corporate designation “company.” A small sample of such references are detailed below:

• PETCO (a combination of PET and COMPANY) for various animal products and services (Reg. No. 5269533);

• WATERCO (a combination of WATER and COMPANY) for various water pump products (Reg. No. 2400219);

• GLASSCO (and design) (a combination of GLASS and COMPANY) for laboratory glassware (Reg. No. 5840601);

• CARCO (and design) (a combination of CAR and CO) for car and truck leasing (Reg. No. 1652621);

• PUPICO (a combination of PUPPY and COMPANY) for dog training devices (Reg. No. 5871320); and

• TEMPCO (and design) (a combination of TEMPERATURE and COMPANY) for heating products (Reg. No. 5867404).
  

Copies of these registrations status pages from TSDR are attached hereto as Exhibit A.

Thus, consumers are likely to view the proposed mark not as a surname, but  as just another corporate designation to which the corporate designation “CO” has been appended.

• STEVECO (Reg. No. 1399908);
• AMYCO (Reg. No. 5188245);
• ADAMCO (and design) (Reg. No. 4252211);
• KEITHCO PETROLEUM (Reg. No. 5833591);
• ALEXCO (Reg. No. 1917632);

• KELLYCO (Reg. No. 1715226)

Copies of these registrations status pages from TSDR are attached hereto as Exhibit B.

            Moreover, the term SARACO does not contain any usual prefixes for surnames, such as “Mc” (as in McDonald) or “Fitz” (as in Fitzgerald).  It also does not contain any usual suffixes for surnames, such as “ley” (as in Rowley) or “ton” (as in Middleton).  Therefore, this factor also weighs strongly in Applicant’s favor.

 

D.        The Fact That SARACO is the Surname of the Applicant’s Chief Executive Officer is Largely Irrelevant In Light of the Rarity of the Use of Applicant’s Mark as a Surname

            The fact that someone connected to an applicant uses the applied-for mark as a surname is not dispositive and, especially if the primary significance of the applied-for mark outweighs the surname significance. For instance, in In re J. J. Yeley, 85 USPQ2d 1150, 1153 (TTAB 2007), the Board concluded that the mark J. J. YELEY was not primarily merely a surname based on the evidence that Yeley (the applicant’s surname) was a rare surname and that the primary significance of the mark was the personal name and the identity of a race car driver. Similarly, in In re Okamoto Corp., 2015 TTAB LEXIS at *12-13 [non-precedential], the Board noted that the rarity of the surname OKAMOTO was of particular importance in its weighing of the factors, and found that the mark was registrable even though it was the name of applicant’s president. Another example is In re Benthin Management GmbH, 37 USPQ2d at 1334, where the Board found that the mark BENTHIN was registrable, despite being the name of applicant’s managing director, in light of the rareness of the surname Benthin and the fact that the mark did not have the look and feel of a surname. Thus, although SARACO is the surname of Applicant’s Chief Executive Officer, this factor is not dispositive and it is strongly outweighed by the other factors.

            For all of the reasons stated above, the Section 2(e)(4) refusal on the basis that the SARACO mark is primarily merely a surname should be withdrawn.

CONCLUSION

            For the foregoing reasons, Applicant respectfully requests that the Examining Attorney withdraw the refusal and allow the application to proceed to publication.

 

EVIDENCE
Evidence in the nature of Exhibit A: Copies of the TSDR status page for U.S. Registrations Nos. 5269533, 2400219, 5840601, 1652621, 5871320, and 5867404 Exhibit B: Copies of the TSDR status page for U.S. Registrations Nos. 1399908, 5188245, 4252211, 5833591, 1917632, and 1715226 has been attached.
Original PDF file:
evi_6517538-20191010130920637142_._App._88297626_-_SARACO_-_Exhibit_A.pdf
Converted PDF file(s) ( 17 pages)
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Original PDF file:
evi_6517538-20191010130920637142_._App._88297626_-_SARACO_-_Exhibit_B.pdf
Converted PDF file(s) ( 18 pages)
Evidence-1
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 014 for precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, namely, ingots, trophies and badges, memorial trophies, cufflinks, boxes, jewel cases, key rings (trinkets or fobs), earrings, key chains, chains, key fobs, lapel pins, trinkets, brooches, clips for collars, clips for ties, tie pins, charms, broaches, pendants, medallions; jewelry and jewelry products, namely, fashion jewelry; precious stones and semi-precious stones; pearls; digital watches; watches; watch straps; clocks; horological and chronometric instruments; works of art of precious metal; leather bracelets and leather necklaces of leather and imitations of leather
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, namely, ingots, trophies and badges, memorial trophies, cufflinks, boxes, jewel cases, key rings (trinkets or fobs), earrings, key chains, chains, key fobs, lapel pins, trinkets, brooches, clips for collars, clips for ties, tie pins, charms, broaches, pendants, medallions; Precious metals and their alloys and goods in precious metals or coated therewith, namely, ingots, trophies and badges, memorial trophies, cufflinks, jewelry boxes, jewel cases, key rings comprised of split rings with decorative fobs or trinkets, earrings, key chains, jewelry chains, decorative key fobs, lapel pins, key chains comprised of split rings with decorative trinkets, jewelry brooches, clips for collars being collar tip jewelry, clips for ties, tie pins, jewelry charms, broaches being jewelry, pendants, medallions; jewelry and jewelry products, namely, fashion jewelry; precious stones and semi-precious stones; pearls; digital watches; electric watches comprising a digital display; watches; watch straps; clocks; horological and chronometric instruments; works of art of precious metal; leather bracelets and leather necklaces of leather and imitations of leatherClass 014 for Precious metals and their alloys and goods in precious metals or coated therewith, namely, ingots, trophies and badges, memorial trophies, cufflinks, jewelry boxes, jewel cases, key rings comprised of split rings with decorative fobs or trinkets, earrings, key chains, jewelry chains, decorative key fobs, lapel pins, key chains comprised of split rings with decorative trinkets, jewelry brooches, clips for collars being collar tip jewelry, clips for ties, tie pins, jewelry charms, broaches being jewelry, pendants, medallions; jewelry and jewelry products, namely, fashion jewelry; precious stones and semi-precious stones; pearls; electric watches comprising a digital display; watches; watch straps; clocks; horological and chronometric instruments; works of art of precious metal; leather bracelets and leather necklaces of leather and imitations of leather
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

The applicant's current attorney information: Keith W. Medansky. Keith W. Medansky of DLA PIPER LLP (US), is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      US
The docket/reference number is 399567-TBA.

The phone number is 312-368-4000.

The fax number is 312 236 7516.

The email address is ch.tm@dlapiper.com

The applicants proposed attorney information: Keith W. Medansky. Keith W. Medansky of DLA PIPER LLP (US), is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      United States
The docket/reference number is 399567000002.

The phone number is 312-368-4000.

The fax number is 312 236 7516.

The email address is ch.tm@dlapiper.com

Keith W. Medansky 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: KEITH W. MEDANSKY. KEITH W. MEDANSKY of DLA PIPER LLP (US), is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      US
The docket/reference number is 399567-TBA.

The phone number is 312-368-4000.

The fax number is 312 236 7516.

The email address is ch.tm@dlapiper.com

The applicants proposed correspondence information: Keith W. Medansky. Keith W. Medansky of DLA PIPER LLP (US), is located at

      P.O. BOX 64807
      CHICAGO, Illinois 60664-0807
      United States
The docket/reference number is 399567000002.

The phone number is 312-368-4000.

The fax number is 312 236 7516.

The email address is ch.tm@dlapiper.com

SIGNATURE(S)
Response Signature
Signature: /Eugenia Schontag/     Date: 10/10/2019
Signatory's Name: Eugenia Schontag
Signatory's Position: Associate attorney, DLA Piper LLP (US), Illinois Bar member

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:    KEITH W. MEDANSKY
   DLA PIPER LLP (US)
   
   P.O. BOX 64807
   CHICAGO, Illinois 60664-0807
Mailing Address:    Keith W. Medansky
   DLA PIPER LLP (US)
   P.O. BOX 64807
   CHICAGO, Illinois 60664-0807
        
Serial Number: 88297626
Internet Transmission Date: Thu Oct 10 18:34:58 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2019101018345829293
5-88297626-610ad6ba0cb5095f5b74ad6393fa7
6668f04b56606c25187dc814b56baf9679843-N/
A-N/A-20191010165136035687