To: | Anest Iwata Corporation (trademark@millernash.com) |
Subject: | U.S. Trademark Application Serial No. 88528842 - IWATA - 223101-2100 |
Sent: | September 09, 2019 12:44:44 PM |
Sent As: | ecom104@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88528842
Mark: IWATA
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Correspondence Address: 111 S.W. FIFTH AVENUE, SUITE 3400
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Applicant: Anest Iwata Corporation
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Reference/Docket No. 223101-2100
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 09, 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.
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).
· Section 2(e)(4) Refusal – Primarily Merely a Surname
· Identification of Goods
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.
Here, applicant’s mark is IWATA in connection with “Airbrushes and parts thereof; spray guns, air compressors.”
Please see the attached evidence from LexisNexis, establishing the surname significance of IWATA. This evidence shows the applied-for mark appearing 1004 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.
In addition, see the attached evidence from Bloomberg® showing that an executive with applicant has the surname IWATA. 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). Further, see the attached evidence from The American Heritage Dictionary that IWATA does not have a recognized meaning other than a surname. 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). Finally, there is no stylization to consider. See TMEP §1211.01(b)(ii).
Accordingly, applicant’s mark is refused registration under Section 2(e)(4) of the Trademark Act.
Response Options
To amend the application to Section 2(f) based on five years’ use, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit the following written statement claiming acquired distinctiveness, if accurate:
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.
TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08. This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
The wording “Airbrushes” in the identification of goods is indefinite and must be clarified to indicate what is being dispensed in the airbrush. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Further, the wording “spray guns” is indefinite and must be clarified to indicate the specific nature of the goods. Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
Applicant may substitute the following wording, if accurate (changes in bold):
Class 7: Airbrushes for applying paint and coloring and replacement parts thereof; paint spray guns, air compressors
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.
ASSISTANCE
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
Michael Eisnach
/Michael Eisnach/
Examining Attorney
Law Office 104
(571) 272-2592
michael.eisnach@uspto.gov
RESPONSE GUIDANCE