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: 6/19/2019

 

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.

 

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).

 

Although no similar registered or pending mark has been found that would bar registration, Applicant must satisfy/address the following Issues:

 

Issues to be Addressed

 

1.    Mark is Primarily Merely a Surname Refusal

2.    Examiner’s Inquiry Questions Requirement

3.    Identification of Goods Requirement – International Class 11

            4.    Foreign Registration Certificate Required

 

 

Mark is Primarily Merely a Surname – Trademark Act Section 2(e)(4) 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. 

 

 

 

“The test for determining whether a mark is primarily merely a surname is the primary significance of the mark as a whole to the purchasing public.”  In re Integrated Embedded, 120 USPQ2d 1504, 1505 (TTAB 2016) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); see In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); 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)  Applicant’s mark “PEUGEOT” could be considered rare.  The referenced evidence shows the applied-for mark appearing 87 times as a surname in the LEXISNEXIS® weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers.    (See results attached hereto pp. 1-5). 

 

 

 

(2)  It appears many people currently, and previously connected with Applicant use the term “PEUGEOT” as a surname. (See evidence obtained from the internet, discussing the Puegeot family’s relationship to Establissements Peugeot Freres including Wikipedia evidence pp. 6-18)

 

 

 

(3)  The attached search result from the Merriam-Webster, Inc., online dictionary shows there is no meaning of the term “PEUGEOT” other than a surname. (See attached page 19).

 

 

 

(4)  The structure and pronunciation of the term “PEUGEOT” does not lend the term to being confused with other terms with other meanings.

 

 

 

(5)  There is no additional stylization in the Applicant’s mark drawing to remove the primary significance from the term as that of a surname, Applicant’s mark appears in standard characters.

 

 

 

“The test for determining whether a mark is primarily merely a surname is the primary significance of the mark as a whole to the purchasing public.”  In re Integrated Embedded, 120 USPQ2d 1504, 1505 (TTAB 2016) (quoting In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); see In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); TMEP §1211.01.

 

 

 

“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).

 

 

 

For the reasons stated herein, Applicant’s mark is refused registration as being primarily merely a surname pursuant to Trademark Act Section 2(e)(4).

 

 

 

Examiner’s Inquiry Question:

 

 

Applicant must provide additional information about this wording to enable proper examination of the application.  Specifically, Applicant must respond to the following questions: 

 

 

1.         Is anyone connected with Applicant currently using the term “PEUGEOT” as a surname?

 

2.         If anyone currently connected with Applicant currently using the term “PEUGEOT” as a surname, please provide these persons full names and present relationships with Applicant and/or Applicant’s company.

 

3.         If anyone previously connected with Applicant currently using the term “PEUGEOT” as a surname, please provide these persons full names and present relationships with Applicant and/or Applicant’s company.

 

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

Amendment to Trademark Act Section 2f Suggested:

 

If Applicant believes Applicant’s mark has acquired distinctiveness in the United States, that the mark has become a distinctive source indicator for the applied-for goods, Applicant may amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f) based on (1) extrinsic evidence and/or (2) five years’ use in commerce that may be regulated by the U.S. Congress.  See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2)-(3); TMEP §1212.08.  The USPTO decides each case on its own merits.  See TMEP §1212.06.

 

To establish acquired distinctiveness by extrinsic evidence or long-term use, an Applicant may rely only on use in commerce that may be regulated by the U.S. Congress.  See 15 U.S.C. §§1052(f), 1127.  Use solely in a foreign country or between two foreign countries is not evidence of acquired distinctiveness in the United States.  TMEP §§1010, 1212.08; see In re Rogers, 53 USPQ2d 1741, 1746-47 (TTAB 1999).

 

EXTRINSIC EVIDENCE OF ACQUIRED DISTINCTIVENESS:

 

To support a claim based on extrinsic evidence, Applicant may submit evidence of “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)).  A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative.  In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq.  Rather, the determination involves assessing all of the circumstances involving the use of the mark.  See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (Fed. Cir. 1985)).

 

VERIFIED STATEMENT OF FIVE YEARS’ USE:

 

To amend the application to assert Section 2(f) based on five years’ use, Applicant should provide (1) information regarding the length of use of the mark in commerce and/or dates of use, and (2) the following written statement claiming acquired distinctiveness, if accurate:

 

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.

 

See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §§1212.05(d), 1212.08.  This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).

 

 

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

 

Identification of Goods Requirement – International Class 11

 

Much of the wording used in the identification of goods must be clarified because it is overly broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Applicant should specify and provide the common commercial name of the goods as indicated below.  Goods of the type offered by Applicant are often identified as electrically powered to remain in International Class 11.

Semi-Colons “;” should be used to separate distinct and individual goods.  Commas “,” should be used in the identification to separate items within a particular category of goods and/or services. When the items are preceded by the word “namely,” a comma should always be used before and after that term. For example, “clothing, namely, hats, caps, sweaters, and jeans” is an acceptable identification of goods in Class 25 and shows proper use of commas.

Applicant may substitute the following wording, if accurate: 

 

Household electrical appliances for steam generating, cooking, refrigerating, freezing and drying, namely, _____{identify each individual item by common commercial name, e.g. electric food steamers, electric rice cookers, refrigerating machines, electric laundry dryers, etc.}; ___{specify type of cooker, e.g. rice, bread, electric, etc.} cookers; cooking stoves; fireplace ovens for cooking;  cooking ovens; cooking hobs being ____{further describe the use and purpose of these goods by common commercial name}; parts of cooking stoves, namely, plates; electric hotplates; cooking range tops; electric refrigerators for household purposes ; freezers ; combined refrigerator-freezers; barbecues; electric coffee machines; electric coffee percolators; electric roasters; electric food steamers; electric multi-cookers; bread baking machines; ice-cream making machines; electric autoclaves for cooking; electric pressure cookers; electric deep fryers; bread toasters; electric kettles; electric wine cellars.

 

 

 

 

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.

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, Applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Foreign Registration Certificate Required

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an Applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the Applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an Applicant by, or certified by, the intellectual property office in the Applicant’s country of origin.  TMEP §1004.01.  If an Applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the Applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the Applicant’s country of origin.  TMEP §1016.

 

Therefore, Applicant must provide a copy of the foreign registration from Applicant’s country of origin.  If the foreign registration is not written in English, Applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

 

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.  

 

 

/Thomas M. Manor/

Trademark Examining Attorney

Law Office 110

Phone: (571) 270-1519

Fax. No. (571) 273-1519

Thomas.Manor@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 6/19/2019 FOR U.S. APPLICATION SERIAL NO. 88368005

 

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 6/19/2019 (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.