To: | CVS Pharmacy, Inc. (IPLegal@CVSCaremark.com) |
Subject: | U.S. Trademark Application Serial No. 88520907 - NAVARRO PHARMACY & HEALTH REWARDS - N/A |
Sent: | September 10, 2019 03:49:17 PM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
HUnited States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88520907
Mark: NAVARRO PHARMACY & HEALTH REWARDS
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Correspondence Address: |
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Applicant: CVS Pharmacy, Inc.
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Reference/Docket No. N/A
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 10, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
· Trademark Act Section 2(e)(4) Surname Refusal
· Disclaimer Requirement
SECTION 2(e)(4) REFUSAL – 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:
(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) The surname is not rare,
Please see the attached evidence from “Frequently Occurring Surnames in the 2010 Census” from the US Census Bureau establishing the surname significance of “NAVARRO”. This evidence shows the surname in the applied-for mark is the top 1000 surnames, ranking 315th place and appearing at least 99,807 times per 33.3 proportion per 100,000 population as a surname in a nationwide conducted survey from a federal agency. This shows that the surname is not rare nationally.
2) The founder is connected with the surname in the applied-for mark,
The applicant’s website states that “Navarro was originally founded in 1940 in Havana, Cuba by Jose Navarro”. Thus, the founder is connected to the surname in the applied-for mark.
3) The wording “NAVARRO” has no recognized meaning other than as a surname,
The attached dictionary evidence shows that the wording “NAVARRO” has no meaning. Thus, the wording “NAVARRO” is simply a surname. Further, combining a surname with a term that is merely descriptive or generic of an applicant’s 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, the wording “PHARMACY & HEALTH REWARDS” is merely descriptive because applicant’s services are for “pharmacy” store services that feature a “bonus incentive program” for customers. In other words, because applicant’s services feature “pharmacy” related retail store services and a “reward” or “bonus incentive program” related to health, the wording “PHARMACY & HEALTH REWARDS” are descriptive of applicant’s services. The attached evidence from All Digital Rewards, Wellworks For you, Carepoynt and Fitbit shows the relatedness of bonus incentive programs and health rewards. Thus, the addition of descriptive wording “PHARMACY & HEALTH REWARDS” does not create a separate, distinct commercial impression as it does not add any feature to the first and dominant wording of the applied-for mark, here specifically the surname “NAVARRO”.
4) The wording “NAVARRO” has the structure and pronunciation of a surname, and
As explained and shown in the first factor, the wording “NAVARRO” is a common surname and is commonly recognized as a surname.
5) The term “NAVARRO” is not stylized to remove its primary significance from that of a surname
The applied-for mark is not stylized and is in standard characters.
Therefore, taking into consideration all the factors, the applied-for mark is merely a surname and is refused under Trademark Act Section 2(e)(2).
RESPONSE OPTIONS
(1) Prior Registrations: Applicant may claim ownership of one or more active prior registrations on the Principal Register of the same mark for 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 and/or services as evidenced by the ownership of active U.S. Registration No(s). 2098890 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 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.” 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
(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 and/or services.” 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. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a).
In this case, applicant must disclaim the wording “PHARMACY & HEALTH REWARDS” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of a feature and use of applicant’s services. 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).
This wording appears in and is encompassed in applicant’s identification of services, “Retail pharmacy store services featuring a bonus incentive program for customers” (italics for emphasis). Further, the attached evidence from All Digital Rewards, Wellworks For you, Carepoynt and Fitbit shows the related nature of “health rewards” and “bonus incentive programs”. Thus, the wording merely describes applicant’s services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PHARMACY & HEALTH REWARDS” 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.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 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
/Joanna Han/
Joanna Han
Trademark Examining Attorney
Law Office 126
(571) 270-3617
joanna.han@uspto.gov
RESPONSE GUIDANCE