To: | KAWAI MUSICAL INSTRUMENTS MANUFACTURING ETC. (docket@carterdeluca.com) |
Subject: | U.S. Trademark Application Serial No. 88549394 - KAWAI - 1687-39 |
Sent: | October 24, 2019 04:23:06 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88549394
Mark: KAWAI
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Correspondence Address: CARTER, DELUCA, & FARRELL, LLP
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Applicant: KAWAI MUSICAL INSTRUMENTS MANUFACTURING ETC.
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Reference/Docket No. 1687-39
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: October 24, 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
SUMMARY OF ISSUES:
SECTION 2(e)(4) REFUSAL—PRIMARILY MERELY A SURNAME
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 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
The attached internet evidence of U.S. Census data shows that over 750 people in the United States have the surname KAWAI, so the surname KAWAI is not a rare surname. The attached internet evidence from applicant’s own website indicates that applicant’s founder had the surname KAWAI and its current president has the surname KAWAI. http://www.kawai-global.com/company/message/; http://www.kawai-global.com/company/history/. So people connected with applicant use KAWAI as a surname. Also, the attached dictionary and gazetteer evidence shows that “Kawai” has no other meaning or significance as a word. http://www.merriam-webster.com/dictionary/kawai. Further, the attached evidence shows that similarly structured surnames like KAWA (over 1,190 people) are common in the United States, so KAWAI has the structure and pronunciation of a surname.
The fact that the mark is in stylized font does not detract from the surname significance of the mark because the stylization is non-distinctive. Adding a non-distinctive design element or letter stylization to a term that is primarily merely a surname does not change the surname significance of the term. The primary significance of such a mark would still be that of a surname. TMEP §1211.01(b)(ii); see In re Pickett Hotel Co., 229 USPQ 760, 763 (TTAB 1986) (holding PICKETT a surname despite use of stylized lettering); cf. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995).
Accordingly, the primary significance of KAWAI in the mark as well as the mark as a whole is that of a surname, and registration is refused under Section 2(e)(4) of the Trademark Act.
Supplemental Register Advisory
AMENDMENT TO IDENTIFICATION OF SERVICES REQUIRED
Applicant may substitute the following wording, if accurate (changes indicated in bold):
Class 41: Educational services, namely, providing courses and classes of instruction relating to arts, crafts, sports or general knowledge; arranging, conducting and organization of seminars; providing on-line publications in the nature of musical scores; providing online publications in the nature of educational materials in the field of music, books, magazines and journals; arranging and planning of musical performances; presentation of musical performances; providing audio or video studio services; providing facilities for movies, shows, plays, music or educational training
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
Robert N. Guliano
/Robert N. Guliano/
robert.guliano@uspto.gov
571-272-0174
RESPONSE GUIDANCE