To: | Twila True Collaborations, LLC (robert@addyhart.com) |
Subject: | U.S. Trademark Application Serial No. 88485842 - DEMARQUEZ - TWI19T027US |
Sent: | September 14, 2019 04:00:28 PM |
Sent As: | ecom116@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 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88485842
Mark: DEMARQUEZ
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Correspondence Address: |
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Applicant: Twila True Collaborations, LLC
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Reference/Docket No. TWI19T027US
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: September 14, 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.
Summary of Issues that the Applicant Must Address
1) Registration is Refused – Mark is Primarily Merely a Surname
2) Additional Significance of the Wording in the Mark is Required
3) Attorney Bar Information is Required
4) Attorney Attestation is Required
REGISTRATION IS REFUSED – MARK IS PRIMARILY MERELY A SURNAME
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:
(2) Whether anyone connected with applicant uses the term as a surname. The applicant must specify whether anyone connected with the applicant uses the term “DEMARQUEZ” as a surname.
(3) Whether the term has any recognized meaning other than as a surname. The attached dictionary entries indicate that the term “DEMARQUEZ” does not have any other recognized meaning. These entries were found during an Internet search conducted on September 14, 2019.
(4) Whether the term has the structure and pronunciation of a surname. As the attached web pages clearly show, the term “DEMARQUEZ” is widely recognized as a surname. These web pages were found during an Internet search conducted on September 14, 2019. And
(5) Whether the term is sufficiently stylized to remove its primary significance from that of a surname. In this case, the term DEMARQUEZ is not stylized. Rather, the proposed mark is in standard character form.
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 LEXISNEXIS® surname database, establishing the surname significance of “DEMARQUEZ.” This evidence shows the applied-for mark appearing 210 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.
1) Prior Registrations: If applicable, 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 as evidenced by the ownership of active U.S. Registration No(s). {please specify} on the Principal Register for the same mark for sufficiently similar goods and/or services.” TMEP §1212.04(e).
2) Five Years’ Use: Applicant may submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The mark has become distinctive of the goods 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.” 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1). Please note that the information in the application indicates that the mark is not being used in commerce as of the filing date of the application.
3) Other Evidence: Applicant may submit other evidence of acquired distinctiveness, with the following statement, if accurate: “The evidence shows that the mark has become distinctive of the goods.” 37 C.F.R. §2.41(a)(3); TMEP §1212.06. Such additional evidence may include “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)).
If applicant cannot satisfy one of the above, applicant may respond by amending the application to seek registration on the Supplemental Register once the applicant files an amendment alleging use of the mark is commerce. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a). 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).
ADDITIONAL SIGNIFICANCE OF THE WORDING IN THE MARK IS REQUIRED
(1) Explain whether the wording in the mark “DEMARQUEZ” has any meaning or significance in the trade or industry in which applicant’s goods are manufactured, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry.
(2) Explain whether the wording in the mark “DEMARQUEZ” identifies a geographic place.
(3) Explain whether the wording in the mark “DEMARQUEZ” has an English translation.
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
ATTORNEY BAR INFORMATION IS REQUIRED
To provide bar information. Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section. See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO records.
ATTORNEY ATTESTATION IS REQUIRED
ASSISTANCE
SEARCH RESULTS
RESPONSE TO OFFICE ACTION
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
/Tina L Snapp/
Examining Attorney
Law Office 116
571-272-9224
Informal Email Tina.Snapp@uspto.gov
RESPONSE GUIDANCE