United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88625190
Mark: VINIK SPORTS GROUP
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Correspondence Address: MANDELBAUM, FITZSIMMONS, HEWITT & CAIN, 2111 W. SWANN AVENUE, SUITE 200 |
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Applicant: Tampa Bay Entertainment Properties, LLC
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Reference/Docket No. N/A
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 21, 2019
Introduction
Search
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:
Section 2(e)(4) – 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.
The following are examples of evidence that is generally considered to be relevant to such a determination: telephone directory listings, excerpted listings and articles from computerized research databases, applicant’s website, evidence in the application record showing the term used as a surname, the manner of use on specimens, dictionary definitions of the term and evidence from dictionaries showing no definition of the term. See TMEP §1211.02(b)(i)-(b)(iii), (b)(v)-(b)(vi).
Please see the attached evidence from advance.lexis.com, establishing the surname significance of “VINIK”. This evidence shows the applied-for mark appearing 219 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.
Further, the issue of determining whether a surname is common or rare is not determined solely by comparing the number of listings of the surname to the total number of listings in a computerized database, because even the most common surname would represent only a small fraction of the database. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004). Rather, if a surname appears routinely in news reports or articles and receives media publicity so as to be broadly exposed to the general public, then such surname is not rare and its primary significance to purchasers would be that of a surname, such as in this case. See In re Beds & Bars Ltd., 122 USPQ2d 1546, 1551 (TTAB 2017); In re Gregory, 70 USPQ2d at 1795; TMEP §1211.01(a)(v). Please see the attached evidence from cnbc.com, wsj.com, and usf.edu showing that “VINIK” is a highly publicized surname.
Additionally, 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); see, e.g., In re Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ 652, 653 (Fed. Cir. 1985) (holding DARTY primarily merely a surname where “Darty” was the surname of applicant’s corporate president); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278-80 (TTAB 2016) (holding ALDECOA primarily merely a surname where ALDECOA was the surname of the founder and individuals continuously involved in the business); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (holding BARR GROUP primarily merely a surname where BARR was the surname of the co-founder and applicant’s corporate officer and GROUP was found “incapable of lending source-identifying significance to the mark”); Miller v. Miller, 105 USPQ2d 1615, 1620, 1622-23 (TTAB 2013) (holding MILLER LAW GROUP primarily merely a surname where “Miller” was the surname of the applicant and the term “law group” was found generic). The attached evidence from gousfbulls.com, nhl.com, and forbes.com shows that Jeffrey VINIK controls Tampa Bay Entertainment Properties, LLC, the applicant.
A nondistinctive term is typically accorded less weight and is not likely to detract from the primary surname significance of the mark. See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1481 n.9, 1482 (TTAB 2017) (construing In re Hutchinson Tech. Inc., 852 F.2d at 554, 7 USPQ2d at 1492-93); TMEP §1211.01(b)(vi). Although individual components of a mark may be weighed to determine the mark’s overall commercial impression, the combination of the individual parts must be viewed as a whole to determine if the additional term alters the primary significance of the mark to the purchasing public. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d at 1378-79, 123 USPQ2d at 1414 (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174-75, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)).
In this case, the addition of “SPORTS GROUP” does not alter the primary significance of the mark as a whole from that of a surname. 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 phrase “SPORTS GROUP” merely describes a characteristic or feature of applicant’s services. The attached definition from merriam-webster.com defines “SPORTS” as “a source of diversion”. Additionally, the attached definition from merriam-webster.com defines “GROUP” as “a number of individuals assembled together or having some unifying relationship”. Moreover, this wording is commonly used in connection with similar services to mean refer to a company that provides business or management services in the field of sports. See the attached evidence from blackbearsportsgroup.com, legendarysportsgroup.com, and fidelitysportsgroup.com. Further, “SPORTS” and words relating to “SPORTS” are in applicant’s identification: “Business management and operation of professional sports teams; Business management services, namely, administration of competitions for sporting and athletic events; Management of event ticketing for others; Promoting sports competitions and events of others; Business operation of general purpose facilities for others, namely, general purpose facilities for sporting events, concerts, conventions, exhibitions and other entertainment events that feature hospitality and food and beverage services” in International Class 35, “Entertainment in the nature of organizing, conducting and providing facilities for sports events, namely, hockey games, concerts, cultural events, athletic and eSports competitions, and athletic and musical festivals; ticket reservation and booking services for the foregoing events” in International Class 41, and “Arena and venue services, namely, providing general purpose facilities for sporting events, concerts, conventions, e-sports competitions, exhibitions and other entertainment events that feature hospitality and food and beverage services; consulting and event planning services in the field of hospitality” in International Class 43. Therefore, “SPORTS GROUP” describes a characteristic or feature of applicant’s services, namely, applicant’s services have to do with sources of diversion in the nature of sports and are provided by a number of individuals. Thus, “SPORTS GROUP” does not alter the primary significance of applicant’s mark, which is that of a surname.
For the foregoing reasons, applicant’s mark is primarily merely a surname and registration is refused pursuant to Section 2(e)(4) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Supplemental Register Advisory
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Generic Advisory
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “SPORTS GROUP” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Identification of Services
Applicant may substitute the following wording, if accurate:
International Class 35: Business management and operation of professional sports teams; Business management services, namely, administration of competitions for sporting and athletic events; Management of event ticketing for others; Promoting sports competitions and events of others; Business operation of general purpose facilities for others, namely, general purpose facilities for sporting events, concerts, conventions, exhibitions and other entertainment events that feature hospitality and food and beverage services; special event planning in the field of hospitality for business purposes.
International Class 41: Entertainment in the nature of organizing, conducting and providing facilities for sports events, namely, hockey games, concerts, cultural events, athletic and eSports competitions, and athletic and musical festivals; ticket reservation and booking services for the foregoing events; special event planning in the field of hospitality for social entertainment purposes.
International Class 43: Arena and venue services, namely, providing general purpose facilities for sporting events, concerts, conventions, e-sports competitions, exhibitions and other entertainment events that feature hospitality and food and beverage services; consulting services in the field of hospitality.
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.
Response Options
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.
/Shelby Niemann/
Shelby Niemann
Trademark Examining Attorney
Law Office 125
(571) 270-7330
shelby.niemann@uspto.gov
RESPONSE GUIDANCE