To: | METALEX, LLC (docketing@boylefred.com) |
Subject: | U.S. Trademark Application Serial No. 88458854 - MORTON - 3205.020 |
Sent: | March 31, 2020 02:50:35 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88458854
Mark: MORTON
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Correspondence Address:
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Applicant: METALEX, LLC
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Reference/Docket No. 3205.020
Correspondence Email Address: |
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FINAL 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) 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: March 31, 2020
This Office action is in response to applicant’s communication filed on March 2, 2020.
In a previous Office action(s) dated August 30, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark, and Trademark Act Section 2(e)(4) for being primarily merely a surname. In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods and/or services, and comply with multiple class application requirements.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided. See TMEP §§713.02, 714.04.
In addition, the following refusal(s) and/or requirement(s) have been withdrawn: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. 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:
REFUSAL – SECTION 2(e)(4) PRIMARILY MERELY A SURNAME
In its March 2, 2020, Response to Office action, applicant has stated that it would file an allegation of use and a Section 2(f) claim. However, no such documents have been filed with the Office, and so the record does not show any arguments or evidence obviating the present refusal exist.
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.
Whether the Surname is Rare
The surname MORTON is not rare. Please see the previously attached evidence from LexisNexis, establishing the surname significance of MORTON. This evidence shows the applied-for mark appearing 119,312 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. Further evidence is attached from mynamestats.com, that shows the frequency of the surname Morton in the United States, including individual states.
Additional evidence is attached showing results from a Google News search that show different individuals with the surname Morton appearing on the news. Moreover, the individual with the surname Morton, appears to be famous and stories about him are currently found on multiple news websites. See attached. Evidence is also attached from Wikipedia.org showing a list notable individuals whose surname is Morton.
Whether anyone connected with applicant uses the term as a surname
At this time, the record does not show any connection between the applicant and the surname MORTON. Accordingly, this element of the test is neutral.
Whether the term has any recognized meaning other than as a surname
The previously attached evidence from The American Heritage Dictionary shows that MORTON is the surname of two famous individuals, and otherwise has no other significance of the word MORTON.
Whether the term has the structure and pronunciation of a surname
MORTON has the structure and pronunciation of a surname. Evidence was previously attached from Forebears showing other surnames similar to MORTON and evidence from SurnameDB showing the origin and history of MORTON as an English, Scottish, and Irish surname, and its various spellings and variations, including: Morten, Moorton, Mourton, Moreton, Mortont, Mortoon, and Mortonn.
Whether the term is sufficiently stylized to remove its primary significance from that of a surname
Lastly, the mark does not contain any stylization or design that would change the overall surname significance.
In the present case, applicant’s mark meets four of the five prongs of the surname test set out above. Accordingly, the applied for mark is primarily merely a surname; therefore refusal of registration is under Section 2(e)(4) of the Trademark Act is continued and now made FINAL.
ADVISORY – SUPPLEMENTAL REGISTER
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.
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
Solano, Carlita
/Carlita Jaye Solano/
Examining Attorney
Law Office 128
(571)270-0348
carlita.solano@uspto.gov
RESPONSE GUIDANCE