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: 5/3/2019

 

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.  

 

INTRODUCTION

 

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.

 

SEARCH RESULTS

 

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).

 

However, applicant must address the following refusal(s) and/or requirement(s):

 

SUMMARY OF ISSUES:

• SURNAME REFUSAL
• SURNAME RESPONSE OPTIONS
• CLASSIFICATION AND IDENTIFICATION OF GOODS/MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

SURNAME REFUSAL

 

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. 

 

Applicant’s standard character mark is “HARDIEBACKER” for construction materials including waterproofing membranes, backboard scoring knives, waterproof tape, and waterproofing membranes.

 

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). 

 

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.

 

FIRST INQUIRY

With respect to the first inquiry and the “HARDIE” portion of the applied-for mark, please see the attached evidence from LexisNexis® establishing the surname significance of Hardie.  This evidence shows the applied-for mark appearing 8,485 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. 

 

In the present case, applicant’s mark combines the surname “HARDIE” with a non-distinctive term, namely, “BACKER”.  The word “BACKER” is defined as canvas or other material used for backing.  See attached definition from http://www.infoplease.com/dictionary/backer. 

 

If the mark combines a surname with an additional term, the mark will be evaluated to determine if the primary significance of the mark as a whole in connection with applicant’s goods and/or services is still that of a surname.  See Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017); TMEP §1211.01(b).  A key element in this determination is the relative distinctiveness of the additional term in the mark.  Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d at 1377, 123 USPQ2d at 1413 (citing In re Hutchinson Tech. Inc., 852 F.2d 552, 554-55, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01(b)(vi). 

 

A nondistinctive term is typically accorded less weight and is not likely to detract from the primary surname significance of the mark.  See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1481 n.9, 1482 (TTAB 2017) (construing In re Hutchinson Tech. Inc., 852 F.2d at 554, 7 USPQ2d at 1492-93); TMEP §1211.01(b)(vi).  Although individual components of a mark may be weighed to determine the mark’s overall commercial impression, the combination of the individual parts must be viewed as a whole to determine if the additional term alters the primary significance of the mark to the purchasing public.  Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d at 1378-79, 123 USPQ2d at 1414 (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174-75, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)). 

 

In this case, the addition of “BACKER” to the surname “HARDIE” does not alter the primary significance of the mark as a whole from that of a surname.  This is the case because the addition of “BACKER” is a non-distincitive term in relation to the goods which identifies a characteristic, feature, or purpose of the goods related to material or goods which are used in connection with construction goods used for backing.  Thus, given the descriptive nature of the term in relation to applicant’s construction goods, the use of “BACKER” in the mark does not alter the primary significance of the mark as a whole from that of a surname.

Therefore, when viewed as a whole in connection with the nondistinctive term “BACKER” in the mark, the primary significance of the mark is that of a surname which is not rare, namely, “HARDIE”.

 

This conclusion is supported by applicant’s attached U.S. Registration Nos. 3550567 and 3705668 for the identical word mark for construction goods registered on the Principal Register under Section 2(f) which is typical for surnames refused for registration as primarily merely a surname.  See attached registrations. 

 

Thus, the first inquiry supports that the applied-for mark is primarily merely a surname.

 

SECOND INQUIRY

Applicnat’s attached webpage, namely, http://www.jameshardie.com.au/company-history/, indicates the following:

 

The predecessor to the current James Hardie company was established in 1888, when the enterprising young James Hardie, searching for new opportunities, left his family's tannery business in Scotland and emigrated to Melbourne, Australia, where he established an import business.

 

Applicant should note that a term appearing on an applicant’s own website in a manner that confirms the term’s surname significance is probative evidence on the issue of that term’s primary significance.  See In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-80 (TTAB 2016) (holding ALDECOA primarily merely a surname where applicant’s website explains the Aldecoa family history in coffee for three generations and notes that the current generation of coffee brewers shares the same surname); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (holding BARR GROUP primarily merely a surname where applicant’s website promotes its association with Mr. Michael Barr and his credentials and accomplishments as an active participant in applicant’s activities under the mark).

 

Thus, the second inquiry supports that the applied-for mark is primarily merely a surname.

 

THIRD INQUIRY

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 The American Heritage Dictionary of the English Language and The Columbia Gazetteer of the World shows that Hardie does not appear in the dictionary or gazetteer.  Thus, this term appears to have no recognized meaning or significance other than as a surname, and the third inquiry supports that the applied-for mark is primarily merely a surname.

 

FOURTH INQUIRY

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).  In the present case, “HARDIE” in the applied-for mark has the structure and pronunciation of a surname similar to other two syllable surnames which end in “die” like Brodie and Bodie.  See attached information regarding these surnames from Newday.  Thus, the fourth inquiry supports that the applied-for mark is primarily merely a surname.

 

FIFTH INQUIRY

The applied-for mark is not sufficiently stylized to remove its primary significance from that of a surname because it is a standard character mark.  Therefore, in the present case, it is unnecessary to consider the fifth inquiry.

 

CONCLUSION

Thus, the relevant inquiries support the conclusion that the applied-for mark is primarily merely a surname, and registration is refused accordingly.

 

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

 

SURNAME RESPONSE OPTIONS

 

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 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). 3550567 and 3705668 on the Principal Register for the same mark for sufficiently similar goods and/or services.”  TMEP §1212.04(e).

 

If applicant cannot satisfy 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).  However, 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.

 

An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS).  Filing an amendment to allege use is not considered a response to an Office action.  37 C.F.R. §2.76(h); TMEP §1104.  An applicant must file a separate response to any outstanding Office action.  TMEP §1104; see 37 C.F.R. §2.76(h). 

 

REQUIREMENT(S)

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

CLASSIFICATION AND IDENTIFICATION OF GOODS/MULTIPLE-CLASS APPLICATION REQUIREMENTS

INTERNATIONAL CLASS 1

The identification of goods for International Class 1 is acceptable as written.

 

INTERNATIONAL CLASS 6

The identification of goods for International Class 6 is acceptable as written.

 

INTERNATIONAL CLASS 8

The following wording in the identification of goods is indefinite and must be clarified because the wording does not make clear the exact nature of the goods with enough specificity by common commercial or generic name for proper identification and classification of the good in this class and/or the wording is too broad and could include goods in other classes, namely:

 

1. Scoring knives [While most knives are classified in International Class 8, the specific type of scoring knife is unclear as to type or purpose such that the wording is indefinite.  Applicant must specifically indicate the type of scoring knives by common commercial or generic name or the purpose for the scoring knives sufficient enough for proper identification and classification of the goods.  As worded, the purpose of the knife may identify knives in multiple classes.];
2. knives used for construction and building purposes [While the purpose for the knives has been set forth, the purposes as stated are insufficient alone to properly classify the goods.  In particular, the wording does not identify the specific type of knife by common commercial or generic name for proper identification and classification of the goods in this class.  Applicant must clearly set forth the specific type of knife by common commercial or generic name and classify the goods accordingly.].

 

See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

INTERNATIONAL CLASS 17

The following wording in the identification of goods is indefinite and must be clarified because the wording does not make clear the exact nature of the goods with enough specificity by common commercial or generic name for proper identification and classification of the good in this class and/or the wording is too broad and could include goods in other classes, namely:

 

1. waterproof tape [Applicant must further clarify the nature and type of waterproof tape with further specific by common commercial and/or generic name as not all tapes are properly classified in this class.  Applicant should review the attached information from U.S. Acceptable Identification of Goods and Services Manual for the common commercial name for various types of tapes which may also be waterproof and the proper classification therefor for acceptable substitute wording.].

 

See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

INTERNATIONAL CLASS 19

The identification of goods for International Class 19 is acceptable as written.

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Applicant may substitute the following wording, if accurate: 

 

Waterproofing chemical compositions; waterproofing membranes in liquid chemical form for use in construction, International Class 1; and/or

 

Nails; screws of metal; waterproof nails and metal screws, International Class 6; and/or

 

Scoring knives for veneer sheets; knives used for construction and building purposes, namely, drawing knives, razor knives, folding knives, working knives, putty knives, utility knives, carpet knives, ceramic knives, and fixed blade knives; hand-operated cutting tools; cement and backboard scoring knives, International Class 8; and/or

 

Scoring knives for surgical purposes, International Class 10; and/or

 

Caulking materials; waterproof sealants; sealants for buildings; waterproof tape, namely, waterproof duct tape and waterproof wallboard joint tape (or indicate with further specificity the type of waterproof tape by common commercial name properly classified in this class); adhesive tape for industrial and commercial use, International Class 17; and/or

 

Waterproofing membranes for roofing, floors and walls; waterproof membrane for use as a floor underlayment, International Class 19.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least six or more classes; however, applicant submitted a fee(s) sufficient for only five class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).  The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

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. 

 

 

 

/Brendan McCauley/

Brendan McCauley

Trademark Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@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 5/3/2019 FOR U.S. APPLICATION SERIAL NO. 88341552

 

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 5/3/2019 (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.