To: | Wright Tool Company (trademarks@walterhav.com) |
Subject: | U.S. Trademark Application Serial No. 88460489 - WRIGHT SQUARE - 70153-042US- |
Sent: | August 30, 2019 03:28:31 PM |
Sent As: | ecom118@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88460489
Mark: WRIGHT SQUARE
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Correspondence Address: |
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Applicant: Wright Tool Company
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Reference/Docket No. 70153-042US-
Correspondence Email Address: |
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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: August 30, 2019
Database Search: 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).
Summary of Issues Applicant Must Address
Possible Additional Issue
Refusal Based on Trademark Act Section 2(e)(4) – Surname Significance of the Mark
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.
An applicant’s mark is primarily merely a surname if the surname, when viewed in connection with the applicant’s recited goods 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.
The evidence attached at the end of this Office action from the LEXISNEXIS® surname database establishes the surname significance of the name WRIGHT. This evidence, consisting of a sample of 50 entries, shows that the applied-for mark appears 22,323 times as a surname in the database, which is a weekly updated directory of cell phone and other phone numbers (such as voice over IP) from various data providers.
Combining a surname with a term that is merely descriptive, primarily geographically descriptive or deceptively misdescriptive, or generic of an applicant’s goods or services typically does not “detract from the primary surname significance” of the mark. Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1481-82, 1481 n.9 (TTAB 2017) (construing In re Hutchinson Tech. Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492-93 (Fed. Cir. 1988)); see TMEP §1211.01(b)(vi).
Specifically, attached dictionary entry shows that a square is a hand tool. The term “square” is a descriptive term that does not create a separate, distinct commercial impression from the surname WRIGHT.
For these reasons, the examining attorney finds that because the mark is primarily merely a surname, registration of the applicant's mark is barred under Section 2(e)(4) of the Trademark Act.
Additional Information about the Mark
The applicant should note that a term that is the surname of an individual applicant or that of an officer, founder, owner, or principal of applicant’s business is probative evidence of the term’s surname significance. TMEP §1211.02(b)(iv); see, e.g., In re Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ 652, 653 (Fed. Cir. 1985) (holding DARTY primarily merely a surname where “Darty” was the surname of applicant’s corporate president); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-80 (TTAB 2016) (holding ALDECOA primarily merely a surname where ALDECOA was the surname of the founder and individuals continuously involved in the business); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (holding BARR GROUP primarily merely a surname where BARR was the surname of the co-founder and applicant’s corporate officer and GROUP was found “incapable of lending source-identifying significance to the mark”); Miller v. Miller, 105 USPQ2d 1615, 1620, 1622-23 (TTAB 2013) (holding MILLER LAW GROUP primarily merely a surname where “Miller” was the surname of the applicant and the term “law group” was found generic).
Applicant’s Response to Surname Refusal
In response to the surname refusal, the applicant may (1) claim acquired distinctiveness of the mark or (2) file an allegation of use of the mark and amend the application to seek registration on the Supplemental Register.
Claim of Acquired Distinctiveness
A mark deemed primarily merely a surname may be registered on the Principal Register under Trademark Act Section 2(f) by satisfying one of the following:
1) Submit a claim of ownership of one or more active prior registrations on the Principal Register for a mark that is the same as the mark in the application and for the same or related goods and/or services. 37 C.F.R. §2.41(a)(1); TMEP §§1212, 1212.04. The following wording is suggested: “The mark has become distinctive of the goods and services as evidenced by the ownership of active U. S. Registration No. 1372182 on the Principal Register for the same mark for sufficiently similar goods and/or services.” TMEP § 1212.04(e). A copy of this registration is attached.
2) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. 37 §2,20: “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 five years immediately before the date of this statement.” 37 C.F.R. §2.41(a)(1); TMEP §§1212.05(d), see 37 C.F.R. §2.193(e)(1).; or
3) Submit actual evidence of acquired distinctiveness. 37 C.F.R. §2.41(a)(3); TMEP §§1212.06. Such evidence may include the following: examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark and/or service mark in the United States; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the applied-for mark as a trademark and/or service mark; and any other evidence that establishes recognition of the applied-for mark as a source-identifier for the goods and/or services. See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transations Corp. of Am., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et. seq.
Trademark Act Section 2(f), 15 U.S.C. §1052(f); see 37 C.F.R. §2.41; TMEP §§1211, 1212.
Amendment to Supplemental Register
(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).
To amend an intent-to-use application under Trademark Act Section 1(b) to use in commerce, an applicant must file, prior to approval of the mark for publication, an acceptable amendment to allege use. See 15 U.S.C. §1051(c); 37 C.F.R. §2.76; TMEP §§806.01(b), 1103. An amendment to allege use must satisfy the following requirements:
(1) STATEMENTS: The following statements: “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”
(2) DATES OF FIRST USE: The date of first use of the mark anywhereon or in connection with the goods and/or services, and the date of first use of the mark in commerceas a trademark or service mark. See more information about dates of use.
(3) GOODS AND/OR SERVICES: The goods and/or services specified in the application.
(4) SPECIMEN: A specimen showing how applicant uses the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. See more information about specimens.
(5) FEE(S): A filing fee for each international class of goods and/or services for which use is being asserted (find current fee information).
(6) VERIFICATION: Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20. See more information about verification.
See 37 C.F.R. §2.76(b); TMEP §1104.08.
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).
If the applicant responds to the refusal, the applicant must also respond to the requirements set forth below.
Disclaimer
In this case, the applicant must disclaim the exclusive right to use of “SQUARE” because it is not inherently distinctive. This word is merely descriptive of a feature of the applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). As noted above, the attached dictionary entry shows that a square is a hand tool. This evidence is linked to the goods at issue in that the evidence shows that “square” is descriptive of the goods. The applicant’s goods are described broadly enough to include hand tool squares.
The applicant may respond to this issue by submitting a disclaimer in the following format:
· No claim is made to the exclusive right to use “SQUARE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Identification and Classification of Goods
To resolve this issue, the applicant may adopt the following identification and classification, if accurate (added wording given in bold):
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.
Multiple Class Application Requirements
(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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least two classes; however, the applicant submitted fees sufficient for only one class. The 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).
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.
Information for TEAS Applicants
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.
How to respond. Click to file a response to this nonfinal Office action
/Leigh Caroline Case/
Examining Attorney
Law Office 118
(571) 272-9140
leigh.case@uspto.gov (preferred)
RESPONSE GUIDANCE
Search: Public Records : Surname
Terms: last-name(Wright) maxresults(500)
Total number found: 22323
No. Name Address Phone
1. WRIGHT, A 9916 BEAVERLAND
DETROIT, MI 48239-1319 313-575-9114
2. WRIGHT, A 25 KIDS
HAVANA, FL 32333-3716 850-539-4565
3. WRIGHT, A 26050 UNDERWOOD
HAYWARD, CA 94544-2718 510-589-5984
4. WRIGHT, A 205-767-6941
5. WRIGHT, A 317-628-7208
6. WRIGHT, A 404-574-7118
7. WRIGHT, A 404-879-8325
8. WRIGHT, A 404-985-2257
9. WRIGHT, A 513-258-3228
10. WRIGHT, A 540-519-3038
11. WRIGHT, A 601-494-5110
12. WRIGHT, A 615-638-2275
13. WRIGHT, A 703-473-2807
14. WRIGHT, A 770-905-5917
15. WRIGHT, A 803-271-8646
16. WRIGHT, A 804-495-9403
17. WRIGHT, A 816-663-2234
18. WRIGHT, A 863-325-5948
19. WRIGHT, A 910-381-3644
20. WRIGHT, A ATLANTA, GA 30303 404-663-3331
21. WRIGHT, A AVONDALE ESTATES, GA 30002 404-538-6405
22. WRIGHT, A BIRMINGHAM, AL 35222 205-705-7687
23. WRIGHT, A CAMERON, MO 64429 816-724-2061
24. WRIGHT, A EAGAN, MN 55121 952-681-1905
25. WRIGHT, A HOUSTON, TX 77002 281-716-7569
26. WRIGHT, A KNOXVILLE, TN 37921 865-936-2718
27. WRIGHT, A NORCROSS, GA 30071 770-329-9565
28. WRIGHT, A PENSACOLA, FL 32501 850-512-6046
29. WRIGHT, A PORT SAINT LUCIE, FL 34952 772-924-6498
30. WRIGHT, A PROVIDENCE, RI 02906 401-345-7223
31. WRIGHT, A SCHAUMBURG, IL 60173 630-744-9326
32. WRIGHT, AARON 11303 31ST NE
LAKE STEVENS, WA 98258-8110 801-404-3088
33. WRIGHT, AARON I 18402 HALSTED APT 24
NORTHRIDGE, CA 91325-4906 323-708-0572
34. WRIGHT, AARON 11 LAS PALOMAS
ORINDA, CA 94563-1915 510-501-9711
35. WRIGHT, AARON 209 RICKENBACKER
BARKSDALE AFB, LA 71110-2249 941-704-9506
36. WRIGHT, AARON 3147 E RIVER BOTTOM
SPANISH FORK, UT 84660-9473 801-577-9173
37. WRIGHT, AARON 1002 SCARLET
HENDERSONVLLE, TN 37075-7209 615-826-6425
38. WRIGHT, AARON 43 SPRUCE KNOLL
ELMORE, AL 36025-1144 850-221-0037
39. WRIGHT, AARON 313-662-4301
40. WRIGHT, AARON 317-238-9444
41. WRIGHT, AARON 517-914-4382
42. WRIGHT, AARON 609-964-8362
43. WRIGHT, AARON 919-480-3121
44. WRIGHT, AASON 803 N HICKORY
SALEM, MO 65560-1129 573-247-8626
45. WRIGHT, ABBEY L 130 N BERGER APT 5
FOND DU LAC, WI 54935-3061 262-689-9304
46. WRIGHT, ABBIE 973-202-8607
47. WRIGHT, ABIGAIL 264 ELIZABETH APT 7
NEW YORK, NY 10012-5514 212-343-3384
48. WRIGHT, ABIGAIL 704-804-9883
49. WRIGHT, ABIGAIL 864-554-8054
50. WRIGHT, ADA 728 BIDDLE UNIT 313
SAINT LOUIS, MO 63101-3105 618-553-5288
Search: Public Records: Surname
Terms: last-name(Wright) maxresults(500)
Date/Time: Wednesday, August 28, 2019 3:11 PM