To: | Pirelli & C. S.p.A. (trademarkdocket@venable.com) |
Subject: | U.S. Trademark Application Serial No. 88615884 - PIRELLI - 140232511057 |
Sent: | December 14, 2019 05:23:56 PM |
Sent As: | ecom117@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88615884
Mark: PIRELLI
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Correspondence Address: ANDREW D. PRICE AND STEVEN B. POWELL
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Applicant: Pirelli & C. S.p.A.
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Reference/Docket No. 140232511057
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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: December 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.
OFFICE SEARCH RESULTS
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
SURNAME REFUSAL
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.
Please see the attached evidence from the Internet, establishing the surname significance of the surname “Pirelli”. Also see results from a Lexis® search of the last name “Pirelli,” displaying a representative sample of people with this surname. This evidence shows the applied-for mark appearing 268 times as a surname in a nationwide telephone directory of names. Also attached is a dictionary search for “pirelli” displaying no results, indicating that the applied-for mark has no recognized meaning other than as a surname.
In light of the above, the mark must be refused as primarily merely a surname under Section 2(e)(4).
Applicant should note the following advisory
ADVISORY REGARDING SURNAME REFUSAL
Applicant may amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f) based on ownership of active U.S. Registration No(s). 4445904. See 15 U.S.C. §1052(f); TMEP §§1212.04 et seq. To do so, applicant must request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit 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). 4445904 on the Principal Register for the same mark for sufficiently similar goods and/or services.
TMEP §1212.04(e); see 37 C.F.R. §2.41(a)(1).
Applicant should note the following requirement(s)
IDENTIFICATION OF GOODS MUST BE CLARIFIED
Applicant may substitute the following wording, if accurate:
International Class 17: Sheets and blocks of foamed latex for use in the manufacture of mattresses and upholstery for armchairs, divans and sofas; synthetic polyethylene foam for use in the manufacture of mattresses and pillows; synthetic materials in the nature of polyethylene foam for use in the manufacture of mattresses, pillows, and quilts; rubber sheets; foam rubber; stuffing of rubber; gutta-percha; raw or semi-worked gum;
International Class 20: Beds; box springs; mattresses; pillows, cushions; bedsprings as part of a box spring or mattress
International Class 24: Bed linens; bed pads; bed sheets; bed spreads; mattress covers; mattress pads; pillow cases; quilts
International Class 27: rubber mats
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.
MULTIPLE CLASS REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least four classes; however, applicant submitted a fee(s) sufficient for only three class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
PARTICULAR GOODS EXCEED SCOPE OF FOREIGN REGISTRATION
In this case, the U.S. application identifies the goods and/or services as follows:
International Class 17: Sheets and blocks of foamed latex for use in the manufacture of mattresses and upholstery for armchairs, divans and sofas; synthetic foam for mattresses and pillows; synthetic materials for mattresses, pillows, and quilts; rubber; gutta-percha; gum
International Class 20: Beds; box springs; mattresses; pillows, cushions; bedsprings as part of a box spring or mattress
International Class 24: Bed linens; bed pads; bed sheets; bed spreads; mattress covers; mattress pads; pillow cases; quilts
However, the foreign registration identifies the following goods and/or services:
International Class 17: Synthetic foam for mattresses and pillows, synthetic materials for mattresses, pillows and quilt, rubber, gutta-percha, gum;
International Class 20: Beds, supports for beds, bed head, bedside table, furniture and parts thereof for beds, mattress and pillows;
International Class 24: Bed sheets, fitted bed sheet covers, bed flat sheets and pillow cases and quilt covers
In particular “Sheets and blocks of foamed latex for use in the manufacture of mattresses and upholstery for armchairs, divans and sofas” and “cushions” and “bed pads” and “mattress pads” in the U.S. application exceeds the scope of the goods and/or services in the foreign registration because these goods do not fall entirely within the wording set forth in the foreign registration.
Therefore, applicant may respond by satisfying one of the following:
(1) Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, ensuring that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
Additionally, applicant may respond by arguing that these goods and/or services are within the scope of the foreign registration and should remain in the U.S. application.
If applicant selects option (1), above, the following amended identification of goods is suggested to comply with the scope requirements as well as the U.S. identification of goods requirements and the multiple class requirements:
International Class 17: Sheets and blocks of foamed synthetic latex for use in the manufacture of mattresses and upholstery for armchairs, divans and sofas; synthetic polyethylene foam
for use in the manufacture of mattresses and pillows; synthetic materials in the nature of polyethylene foam for use in the manufacture
of mattresses, pillows, and quilts; rubber sheets; foam rubber; stuffing of rubber; gutta-percha; raw or semi-worked gum;
International Class 20: Beds; box springs; mattresses; pillows, cushions in the nature of pillows; bedsprings as part of a box spring or mattress
International Class 24: Bed linens; bed pads;
bed sheets; bed spreads; mattress covers; mattress pads; pillow cases; quilts
RESPONSE
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.
/Miah Rosenberg LaMont/
Examining Attorney
Law Office 117
(571) 272-6170
miah.lamont@uspto.gov
RESPONSE GUIDANCE