Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  November 21, 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

 

This Office action is in response to applicant’s communication filed on November 4, 2019.

 

In a previous Office action dated May 3, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  SURNAME REFUSAL.  In addition, the examining attorney provided information about response options to obviate the surname refusal including making a claim of acquired distinctiveness based on prior registrations owned by the applicant and amending the application to the Supplemental Register.  Furthermore, In addition, applicant was required to satisfy the following requirements:  CLASSIFICATION AND IDENTIFICATION OF GOODS/MULTIPLE-CLASS APPLICATION REQUIREMENTS.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied:  CLASSIFICATION AND IDENTIFICATION OF GOODS/MULTIPLE-CLASS APPLICATION REQUIREMENTS.  See TMEP §§713.02, 714.04.  

 

The examining attorney has considered applicant’s arguments in support of registration and has found them unpersuasive.  In addition, in the alternative, applicant’s claim of acquired distinctiveness in part is insufficient as discussed below.  Moreover, applicant’s claim of acquired distinctiveness in part represents a new issue with this application which is addressed below. TMEP §714.05(a)(i).

 

SUMMARY OF ISSUES:

• SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME
• SECTION 2(f) CLAIM OF ACQUIRED DISTINCTIVENESS IN PART IS INSUFFICIENT
• SURNAME RESPONSE OPTIONS
• ADVISORY:  SECTION 2(f) CLAIM IN AN ITU APPLICATION

 

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

 

Registration is refused because the applied-for mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211. 

 

Applicant has applied-for the standard character mark “HARDIEBACKER” for construction products in International Classes 1, 6, 8, 17, and 19.

 

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. 

 

As previously noted and discussed in the Office action dated May 3, 2019, the relevant inquires 1, 2, 3, and 4 all support that the applied-for mark is primarily merely a surname.  See the previously attached arguments and evidence in support of this conclusion from the Office action dated May 3, 2019 as set forth and incorporated into this Office action by reference under the relevant headings FIRST INQUIRY, SECOND INQUIRY, THIRD INQUIRY, and FOURTH INQUIRY.

 

APPLICANT’S ARGUMENTS

 

Applicant contends that when viewed as a whole the applied-for mark is not primarily merely a surname.  Applicant respectfully disagrees that consumers would break up the mark “HARDIEBACKER” into the component parts “HARDIE” and “BACKER” and consider the “HARDIE” prefix to be primarily merely a surname.  Applicant contends that this is the case because the mark is presented as, spoken as, and flows as one continuous term without a phonetic break.  For this reason, applicant contends that consumers recognize the applied-for mark as a distinctive mark in and of itself.  However, applicant’s line of reasoning is unpersuasive given that even with a space the mark would be spoken as and flow as one continuous term.

 

While the "HARDIE" prefix may bring to mind the durable nature and strength of applicant's goods as applicant contends, this does not detract from the fact that the relevant surname inquires support the conclusion that the applied-for mark is primarily merely a surname.  Moreover, this is particularly true with respect to inquiry three regarding the lack of dictionary meaning for the term "HARDIE".  There is no definitional support that the primary significance of "HARDIE" is not that of a surname and only related to the durable nature and strength of the goods as applicant contends as related to the phonetically equivalent term hardy and its meaning.  Without such definitional support, in the context of applicant's goods, the conclusion that the term clearly establishes this meaning other than a surname is not supported by the evidentiary record in this case.

 

The fact that the applicant was founded by an individual with the name James Hardie supports the mark as a whole is primarily merely a surname regardless of whether the mark is comprised of a unitary term or not as this is one of the surname inquiries which supports this conclusion.  The history of the applicant’s company is relevant to this determination which also happens to be the reason why applicant came up with its naming convention for its large family of marks derived from this very surname.  While the fact that the mark shares a surname of someone associated with the applicant is not dispositive alone in a surname refusal as applicant correctly points out, in the present case it is one of four inquires which supports the conclusion that the applied-for mark as a whole is primarily merely a surname.  Moreover, while the entire mark does not have the look and feel of a surname because it includes the term “BACKER”, this does not detract from the fact that “HARDIE” itself has the look and feel of a surname which is the dominant prefix for the mark.

 

Applicant points out that many of applicant’s registrations have issued as inherently distinctive and has provided a copy of such registrations as Exhibit A to applicant’s response.  Applicant contends that these registrations show that applicant’s “HARDIE-containing” marks are generally recognized by the public to be inherently distinctive.  With respect to these registrations, the examining attorney notes that the fact that third-party registrations exists for marks similar to applicant’s mark in the present case is not conclusive on the surname issue.  An applied-for mark that is primarily merely a surname does not become registrable simply because other seemingly similar marks appear on the register.  Moreover, applicant has other “HARDIE” registrations with additional word elements which have been held to be primarily merely a surname and which have been registered on the Principal Register under Section 2(f) denoting the marks as a whole were determined to be primarily merely a surname, namely:

 

1. U.S. Registration No. 5506457 for the mark “HardieRewards” stylized registered on the Principal Register under Section 2(f);
2. U.S. Registration No. 5506456 for the standard character mark “HARDIEREWARDS” registered on the Principal Register under Section 2(f);
3. U.S. Registration No. 5728168 for the standard character mark  “HARDIENAIL” registered on the Principal Register under Section 2(f);
4. U.S. Registration No. 5198027 for the mark “HardieStore” stylized registered on the Principal Register under Section 2(f);
5. U.S. Registration No. 5198026 for the standard character mark “HARDIESTORE” registered on the Principal Register under Section 2(f);
6. U.S. Registration No. 3731702 for the standard character mark “HARDIEPANEL” registered on the Principal Register under Section 2(f);
7. U.S. Registration No. 3619690 for the mark “HardiePlank” stylized registered on the Principal Register under Section 2(f);
8. U.S. Registration No. 3705668 for the standard character mark “HARDIEBACKER” for registered on the Principal Register under Section 2(f);
9. U.S. Registration No. 3731703 for the standard character mark “HARDIESHINGLE” registered on the Principal Register under Section 2(f);
10. U.S. Registration No. 3619689 for the mark “HardieShingle” stylized registered on the Principal Register under Section 2(f);
11. U.S. Registration No. 3619688 for the mark “HardiePanel” stylized registered on the Principal Register under Section 2(f);
12. U.S. Registration No. 3661216 for the standard character mark “HARDIEBLADE” registered on the Principal Register under Section 2(f);
13. U.S. Registration No. 3627383 for the mark “HardieTrim” stylized registered on the Principal Register under Section 2(f);
14. U.S. Registration No. 3725888 for the standard character mark “HARDIESOFFIT” registered on the Principal Register under Section 2(f);
15. U.S. Registration No. 3643927 for the mark  “HardieBlade” stylized registered on the Principal Register under Section 2(f);
16. U.S. Registration No. 3627382 for the standard character mark “HARDIETRIM” registered on the Principal Register under Section 2(f);
17. U.S. Registration No. 3550568 for the mark “HardieSoffit” stylized registered on the Principal Register under Section 2(f);
18. U.S. Registration No. 3550567 for the mark “HardieBacker” stylized registered on the Principal Register under Section 2(f); and
19. U.S. Registration No. 3550566 for the standard character mark “HARDIEPLANK” registered on the Principal Register under Section 2(f).

 

See attached registrations.

 

Applicant’s assertion that “HARDIE” is not a common surname is further unpersuasive on the issue, particularly in light of the registrations noted above.  Moreover, the issue of determining whether a surname is common or rare is not determined solely by comparing the number of listings of the surname to the total number of listings in a computerized database, because even the most common surname would represent only a small fraction of the database.  In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).  In the present case, the evidence of record shows that the surname “HARDIE” is not sufficiently rare such that on balance with the other surname factors the conclusion that the mark is primarily merely a surname is sustainable.  This is particularly true that when viewed in the context of the goods which relate to the company founder with the same surname. 

 

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.

 

SECTION 2(f) CLAIM OF ACQUIRED DISTINCTIVENESS IN PART IS INSUFFICIENT

 

In the alternative, to overcome the surname refusal, applicant has submitted a Section 2(f) claim of acquired distinctiveness in part as to “HARDIE”.  While the examining attorney has reviewed the nature of applicant’s claim.  In the present case, the claim is insufficient.

 

Moreover, although applicant did identify active U.S. Registration No(s). 3550567 and 3705668 in applicant’s response.  Applicant did not provide the following required statement which would have been an acceptable Section 2(f) claim, namely:  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).  Applicant should see the SURNAME RESPONSE OPTIONS section below regarding this claim to obviate the refusal.

 

Applicant’s applied-for mark is the unitary standard character mark “HARDIEBACKER”.  In the present case, given that the mark is unitary, a Section 2(f) claim in part is not appropriate.  In the present case, the applicant has clearly identified the portion of the mark for which distinctiveness is claimed in part, namely, “HARDIE”. 

Generally, the element that is the subject of the Section 2(f) claim must present a separate and distinct commercial impression apart from the other elements of the mark.  That is, it must be a separable element in order for the applicant to assert that it has acquired distinctiveness as a mark.  Consequently, if a mark is unitary for purposes of avoiding a disclaimer, a Section 2(f) claim in part would generally not be appropriate since the elements are so merged together that they cannot be regarded as separable. If appropriate, the applicant can claim Section 2(f) as to the entire unitary mark.  See TMEP §1212.09(f)(ii).  Thus, in the present case, because the applied-for mark is unitary, a Section 2(f) claim in part is not appropriate and applicant’s claim is insufficient to obviate the refusal.

The examining attorney also notes the information below regarding applicant’s surname options and the information regarding a Section 2(f) claim in an intent-to-use application.

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). 

ADVISORY:  SECTION 2(f) CLAIM IN AN ITU APPLICATION

 

In addition, applicant should note that an intent-to-use applicant who has used the same mark on related goods and/or services may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).

 

The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

 

(1)       Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and

 

(2)       Applicant must show sufficient relatedness of the goods and/or services in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use.  The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.

 

TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).

 

Thus, if applicant attempts to show that the applied-for mark has acquired distinctiveness for this intent-to-use application, applicant must meet these two requirement particularly that of the same mark.

 

 

RESPONDING TO THIS OFFICE ACTION

 

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. 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Brendan McCauley/

Brendan McCauley

Trademark Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@USPTO.GOV

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 21, 2019 for

U.S. Trademark Application Serial No. 88341552

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Brendan McCauley/

Brendan McCauley

Trademark Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@USPTO.GOV

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 21, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”