To: | SANLONG XIE (1058352505@qq.com) |
Subject: | U.S. Trademark Application Serial No. 88565353 - WAKABAYASHI - N/A |
Sent: | November 01, 2019 02:10:46 PM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88565353
Mark: WAKABAYASHI
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Correspondence Address: |
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Applicant: SANLONG XIE
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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: November 01, 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).
SUMMARY OF ISSUES
· Supplemental Register Advisory
· Identification of Goods Requirement
· Specimen & Request for Information Requirement
· Representative Specimens Requirement
· U.S. Counsel 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, “‘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.
First, attached evidence from LEXISNEXIS® establishes the surname significance of WAKABAYASHI. This evidence shows the applied-for mark appearing four hundred and eighty five (485) 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.
Although WAKABAYASHI appears to be a relatively rare surname in the United States, 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). Moreover, attached evidence from Wikipedia establishes that several famous individuals have and/or had the surname WAKABAYASHI. Therefore, the first factor weighs in favor of refusal.
As to the second factor, there is no evidence of record indicating whether anyone connected with applicant uses the term as a surname. Therefore, the second factor is neutral.
With regard to the third factor, 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). Attached evidence from American Heritage dictionary and the Columbia Gazetteer establishes that WAKABAYASHI does not appear in the English dictionary and is not a known location. Thus, this term appears to have no recognized meaning or significance other than as a surname. Therefore, the third factor weighs in favor of refusal.
As to the fourth factor, the attached evidence from Ancestry shows that WAKABAYASHI is a known Japanese surname that is similar in structure and pronunciation to other surnames such as “Hirabayashi, Kobayashi, Hayashi, Takahashi, Igarashi, [and] Nakatani.” 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). Therefore, the forth factor weighs in favor of refusal.
The fifth factor assesses whether the term is sufficiently stylized to remove its primary significance from that of a surname. In this case, the applied-for mark is in standard character form, and thus does not have any particular stylization to remove its primary significance from that of a surname. Thus, the fifth factor remains neutral.
Therefore, since WAKABAYASHI is a known surname, has no known meanings other than as a surname, has the structure and pronunciation of a surname, and is not stylized so as to remove its primary significance from that of a surname, registration is refused since the purchasing public would perceive WAKABAYASHI as primarily merely a surname. Accordingly, registration is refused under Section 2(e)(4) of the Trademark Act.
SUPPLEMENTAL REGISTER ADVISORY
However, if the applicant responds to the refusal, applicant must also respond to the requirements below.
IDENTIFICATION OF GOODS REQUIREMENT
The identification of goods contains indefinite wording that requires clarification, as outlined below.
Applicant must clarify the wording “baby layettes for clothing” in the identification of goods in International Class 025 because this wording is no longer acceptable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Per the updated identification manual, “[o]n September 2, 2019, this entry was deleted because it was causing confusion. This wording is no longer acceptable.” Instead, the applicant should use the similar wording “clothing layettes for babies” in Class 025.
Applicant should also note the additional necessary specifications included in the suggested identification below.
Applicant may adopt the following wording, if accurate (suggested edits in bold):
Class 025: Albs; Clothing layettes for babies; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments; Clothing, namely, folk costumes; Cyclists' jerseys; Gloves; Hats; Hosiery; Scarves; Shawls; Shoes; Sleepwear; Swimming costumes; Underclothing; Underpants
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.
SPECIMEN & REQUEST FOR INFORMATION REQUIREMENT
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). “Use in commerce” means (1) a bona fide use of the applied-for mark in the ordinary course of trade (and not merely to reserve a right in the mark), (2) the mark is placed in any manner on the goods, packaging, tags or labels affixed to the goods, or displays that directly associate the mark with the goods and have a point-of-sale nature, and (3) the goods are actually sold or transported in commerce. See 15 U.S.C. §1127.
An image of a product or packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).
In this case, the mark appears to be floating above the goods in a manner that gives the appearance that the mark has been digitally added. Moreover, the coloring of the goods around the mark is noticeably different than the rest of the goods, another common indicator that the specimens have been digitally altered. Finally, the specimens featuring the mark on a t-shirt are clearly clothing items made by Oshkosh B’Gosh, Inc., and still contain the Oshkosh trademark on them. See attached third-party Registration No. 1559976, OSHKOSH. This establishes that the applicant has merely taken the goods of another and affixed their mark on top to create a mock-up of their mark on the goods.
Additional information/documentation required. To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the following requests for information and documentation about the specimen(s). See 37 C.F.R. §2.61(b); TMEP §814. Answer for each specimen/photograph/image previously provided. For any website source submitted as supporting evidence, provide a digital copy of the entire webpage from top to bottom, as rendered in an Internet browser, that includes the URL and access or print date. TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)).
(1) Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.
(2) Was the specimen created for submission with this application? If so, specify the date each specimen was created. If applicant obtained the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a digital copy of relevant webpage(s) for each image.
(3) Provide information about and examples of how applicant’s goods appear in the actual sales environment.
(a) If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark.
(b) If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named retailer, and a digital copy of the webpages showing the goods for sale on the named website.
(c) If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs and/or documentation showing the goods for sale in that environment.
(4) If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.
(5) For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and whether the goods are still for sale to or within the United States in that environment.
(6) For the goods identified in response to question (1), specify the dollar amount of sales with or within the United States and provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting personal or private information of buyers as necessary.
Response options. Applicant may respond to the refusal of registration due to the specimen’s failure to show actual use in commerce by amending the filing basis to allege intent to use the mark in commerce, for which no specimen is required now. See 37 C.F.R. §2.34. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
Alternatively, applicant may also respond to the refusal by submitting a different specimen (a “verified substitute specimen”) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods identified in the application. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
For an overview of these response options and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
If applicant submits a verified substitute specimen, applicant must also fully respond to all the requirements for information and documentation. Failure to comply with a requirement to furnish information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional information or materials of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004). However, amending the application filing basis to intent-to-use under Section 1(b) will resolve the requirements for information and documentation. Applicant is advised that they cannot both amend to the Supplemental Registry to overcome the Section 2(e)(1) Refusal and amend the filing basis to Section 1(b) because applications filed under Section 1(b) are not eligible for the Supplemental Registry until an Amendment to Allege Use is submitted.
REPRESENTATIVE SPECIMENS REQUIREMENT
Applicant has applied for a multitude of goods in International Class 025 but failed to submit an acceptable specimen. Moreover, the application identifies a variety of goods, including “albs,” and “children’s and infant’s apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments,” which are less commonly provided by a single entity. Due to the disparate nature of the goods, additional specimens are required. If an identification is so broad that it encompasses a wide range of goods, the applicant must submit evidence that it actually uses the mark on a wide range of goods to obtain registration. See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976); 37 CFR 2.61(b); TMEP §§904.01(a) and 1402.03.
Applicant must submit a proper specimen for each of the following groups of goods:
1. Albs
2. Baby layettes for clothing; Children's and infant's apparel, namely, jumpers, overall sleepwear, pajamas, rompers and one-piece garments
3. Clothing, namely, folk costumes
4. Cyclists' jerseys
5. Gloves; Hats; Scarves; Shawls
6. Hosiery; Underclothing; Underpants
7. Shoes
8. Sleepwear
9. Swimming costumes
If applicant is unable to provide specimens to support use of these items, applicant must delete these entries, or amend the filing basis for those goods that were not in proper use as of the application filing date to an intent to use basis under Section 1(b). This option will later necessitate additional fees and filing requirements such as providing a specimen for these goods at a subsequent date. Applicant is advised that they cannot both amend to the Supplemental Registry to overcome the Section 2(e)(1) Refusal and amend the filing basis to Section 1(b) because applications filed under Section 1(b) are not eligible for the Supplemental Registry until an Amendment to Allege Use is submitted.
Failure to comply with a requirement to furnish additional specimens is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional specimens of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
RESPONSE GUIDELINES
How to respond. Click to file a response to this nonfinal Office action
/Fox, Lyal/
Lyal Fox
Examing Attorney
Law Office 113
571-270-7884
lyal.fox@uspto.gov
RESPONSE GUIDANCE