Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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 26, 2020

 

This Office action is in response to applicant’s communication filed on March 2, 2020.

 

In a previous Office action(s) dated September 3, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: 

• Section 2(e)(4) Refusal – Primarily Merely a Surname. 

 

Applicant’s arguments in response to this refusal have been carefully reviewed and considered, however, in light of the evidence of record and applicable law, this refusal is maintained and is made FINAL.

 

Further, 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:

• Section 2(e)(4) Refusal – Primarily Merely a Surname
• Advisory:  Supplemental Register – Section 1(b) Application

 

 

 

Section 2(e)(4) Refusal – Primarily Merely a Surname

 

This refusal is maintained and is made FINAL.

 

Registration continues to be refused and is made FINAL 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 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.

 

Please see the attached evidence from the Internet, establishing the surname significance of CLEMENS.  This evidence shows the applied-for mark appearing 25,902 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. 

 

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).  Rather, if a surname appears routinely in news reports or articles and receives media publicity so as to be broadly exposed to the general public, then such surname is not rare and its primary significance to purchasers would be that of a surname, such as in this case.  See In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017); In re Gregory, 70 USPQ2d at 1795; TMEP §1211.01(a)(v).

 

There are several recent news articles that mention individuals with the surname CLEMENS, which were attached to the previous Office Action of record, further demonstrating that CLEMENS is not a rare surname and that the primary significance of CLEMENS is a surname.

• http://www.espn.com/mlb/story/_/id/27428135/clemens-nixes-political-run-citing-climate, identifying former Major League Baseball player Roger Clemens;
• http://www.ballstatedaily.com/article/2019/09/sports-column-clemens-nfl-player-hold-out-power, identifying an individual named Daric Clemens;
• http://detroitsportsnation.com/detroit-tigers-promote-minor-league-prospect/ddrysdale/detroit-tigers-news/08/21/2019/207787/, identifying an individual named Kody Clemens;
• http://billmichaelssports.radio.com/media/audio-channel/clemens-pettine-wants-defense-be-cornerback-heavy, identifying an individual named Mike Clemens;
• http://www.ksfy.com/content/news/Man-charged-with-kidnapping-Humboldt-woman-558704471.html, identifying an individual named Sam Clemens; and
• http://speedsport.com/sprints-midgets/world-of-outlaws-sprint-cars/shane-stewart-departing-cjb-motorsports/, identifying an individual named Chad Clemens.

 

While no individual named CLEMENS is connected with this particular application, this application was filed on behalf of counsel for a corporation, without identifying any particular individuals or employees at that corporation.

 

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 previously attached evidence of record from the Lexico Dictionary shows that CLEMENS does not appear in the dictionary.  See previously attached definition evidence of record.

 

Thus, this term appears to have no recognized meaning or significance other than as a surname. 

 

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). 

 

Here, the name CLEMENS has the look and feel of a surname as demonstrated by the previously attached evidence of record demonstrating other surnames with similar linguistic pattern, e.g., Clement, Clemence, Clemes, etc.  See previously attached evidence from http://www.surnamedb.com/Surname/Clemens.  Further, additional evidence attached to the present Office Action shows additional surnames with a similar linguistic patterns, including “Clemmens, Clemans, Clement, Clements, Klemens, Clemons, Levens”.  See attached evidence on the Clemens Family History from Ancestry.com.  

 

Lastly, the relevant mark is in standard characters and does not contain any additional wording or stylization.  Accordingly, the fifth factor as to stylization of the applied-for mark is not relevant in this particular case.

 

Response to Applicant’s Arguments

 

Applicant’s principal argument in its March 2, 2020 response is that the surname “CLEMENS” is allegedly not rare.  The examining attorney respectfully disagrees.  The relevant evidence demonstrates that this surname presently appears nearly 26,000 times in the LEXISNEXIS database.  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).  Rather, if a surname appears routinely in news reports or articles and receives media publicity so as to be broadly exposed to the general public, then such surname is not rare and its primary significance to purchasers would be that of a surname, such as in this case.  See In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017); In re Gregory, 70 USPQ2d at 1795; TMEP §1211.01(a)(v).  Additional evidence of record shows many instances of individuals with this surname routinely appearing in recent news articles, demonstrating that the surname at issue is not rare.

 

Additionally, the statute makes no distinction between rare and commonplace surnames and even a rare surname may be unregistrable under Trademark Act Section 2(e)(4) if its primary significance to purchasers is that of a surname.  See In re Etablissements Darty et Fils, 759 F.2d 15, 16-18, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1281 (TTAB 2016) (citing In re E. Martinoni Co., 189 USPQ 589, 590-91 (TTAB 1975)); TMEP §1211.01(a)(v).  There is no minimum amount of evidence needed to establish that a mark is primarily merely a surname.  See In re Etablissements Darty et Fils, 759 F.2d at 17, 225 USPQ at 653; In re Beds & Bars Ltd., 122 USPQ2d at 1548; TMEP §1211.02(b)(i).

 

Applicant also claims that there is no person connected with it that uses “CLEMENS” as a surname and argues this weighs in favor of registration.  However, the fact that “a proposed mark is not applicant’s surname, or the surname of an officer or employee, does not tend to establish one way or the other whether the proposed mark would be perceived as a surname.”  In re Thermo LabSystems Inc., 85 USPQ2d 1285, 1287 (TTAB 2007) (quoting In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004)); see In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717, 1724 (TTAB 2016).  In a surname analysis, the absence of a person connected with applicant that has this term as a surname is a neutral factor.  In re Thermo LabSystems Inc., 85 USPQ2d at 1287.

 

Applicant also argues that the fact that the applied-for mark does not appear in the dictionary carries little weight, and “that collection of evidence indicates that the term is not merely a surname” (emphasis in applicant’s Response).  The examining attorney respectfully disagrees, as this factor is routinely considered in this determination under Trademark Act Section 2(e)(4), and the evidence of record weighs in favor of refusal.  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). 

 

Lastly, applicant argues that “CLEMENS falls with the category of words that do not have the appearance of surnames” without any evidence supporting this position, merely arguing “[w]ith the technology available today, almost any term can be found as a surname on a directory yet that should not be a primary indicator.”  The examining attorney disagrees, as the relevant reviewing courts continue to weigh this factor as a relevant inquiry under Trademark Act Section 2(e)(4).  As the previously attached evidence of record and additional evidence attached to this Office Action demonstrate, CLEMENS has the look and feel of a surname.

 

Accordingly, the applied-for mark continues to be refused registration on the Principal Register under Trademark Action Section 2(e)(4).  Applicant may respond to the refusal by submitting additional evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register or under Section 2(f), if appropriate.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register or seeking registration under Section 2(f) does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

Advisory:  Supplemental Register – Section 1(b) Application

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended 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 the amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(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).

 

Response Guidelines

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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).

 

 

/Dustin T. Bednarz/

Examining Attorney

USPTO Law Office 121

dustin.bednarz@uspto.gov

571-270-1151

 

 

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 March 26, 2020 for

U.S. Trademark Application Serial No. 88460563

 

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. 

 

 

/Dustin T. Bednarz/

Examining Attorney

USPTO Law Office 121

dustin.bednarz@uspto.gov

571-270-1151

 

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 March 26, 2020, 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.”