To: | Santana Tesoro, LLC (trademarks@donahue.com) |
Subject: | U.S. Trademark Application Serial No. 88625712 - THE SANTANA COFFEE COMPANY - N/A |
Sent: | July 14, 2020 11:42:59 AM |
Sent As: | ecom112@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 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88625712
Mark: THE SANTANA COFFEE COMPANY
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Correspondence Address: |
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Applicant: Santana Tesoro, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: July 14, 2020
The refusal under Trademark Act Section 2(e)(4) is now made FINAL for the reasons set forth below. See 15 U.S.C. §1052(e)(4); 37 C.F.R. §2.63(b).
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.
(1) The surname SANTANA is not rare as evidenced by the 138,302 times it appeared in the LEXIS ADVANCE surname database.
Please see the attached evidence from LEXIS ADVANCE, establishing the surname significance of SANTANA. This evidence shows the applied-for mark appearing 138,302 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.
(2) Carlos Santana is connected to the applicant and this application. The applicant has stated that “The SANTANA mark is uniquely associated with the legendary musical artist Carlos Santana and his band, Santana.
(3) The applicant has argued that SANTANA does have a recognized meaning other than as a surname and is the name of the band SANTANA. However, the applicant has also stated that the name of the band is named after Carlos Santana. This other recognized meaning further reinforces that the term SANTANA is primarily merely a surname.
(4) The word SANTANA does have the structure and appearance of a surname. The website (http://namecensus.com/surnames_S.htm) shows numerous surnames from the U.S. Census that start with SAN, SANT, and SANTA. The examples from the census website include Santacroce, Santacruce, Santaella, Santagata, Santago, Santaloci, Santalucia, Santamaria, Santamarina, Santangelo, Santee, Santibanez, Santillan, and Santino.
(5) The applicant’s mark has no stylization because the mark was applied for as a standard character mark. Therefore, the term is not sufficiently stylized to remove its primary significance from that of a surname
The applicant has not made an affirmative claim of acquired distinctiveness with a registration that is “on the Principal Register of the same mark for goods and/or services that are sufficiently similar to those named in the pending application.”
Other Evidence: Applicant may submit other evidence of acquired distinctiveness (such as verified statements of long term use, advertising and sales expenditures, examples of advertising, affidavits and declarations of consumers, customer surveys), with the following statement, if accurate: “The evidence shows that the mark has become distinctive of the goods and/or services.” See 37 C.F.R. §2.41; TMEP §§1212.06 et seq. When determining whether the evidence shows the mark has acquired distinctiveness, the trademark examining attorney will consider the following six factors: (1) association of the mark with a particular source by actual purchasers (typically measured by customer surveys linking the name to the source); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage. See Converse, Inc. v. ITC, 909 F.3d 1110, 1120, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018) (“the Converse factors”). “[N]o single factor is determinative.” In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. Rather, all factors are weighed together in light of all the circumstances to determine whether the mark has acquired distinctiveness. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424.
If applicant cannot satisfy one of the above, applicant may respond by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a).
The examining attorney has attached the SANTANA TESORO owned registrations that are registered on the principal register with Section 2(f) U.S. Registration Nos. 3866562, 2996432, 2581308, and 2211379, and a third party registration for SANTANA mark registered on the supplemental register with U.S. Registration No. 2333957.
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 the wording COFFEE COMPANY does not alter the primary significance of the mark as a whole from that of a surname. The addition of the generic word COFFEE for “coffee” and an entity designation of COMPANY does not diminish the surname significance of SANTANA. The addition of a common and nondistinctive entity designation, such as “Inc.” or “Co.,” or wording that identifies a family business, such as “Bros.” or “& Sons,” does not diminish the surname significance of a term that is otherwise primarily merely a surname. See In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 206, 98 USPQ 265, 267 (C.C.P.A. 1953) (S. SEIDENBERG & CO’S.); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (BARR GROUP); In re P.J. Fitzpatrick, Inc., 95 USPQ2d 1412, 1412 (TTAB 2010) (P.J. FITZPATRICK, INC.); In re Piano Factory Grp. Inc., 85 USPQ2d 1522, 1526-27 (TTAB 2007) (VOSE & SONS).
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Warren L. Olandria/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 112
Phone: 571-272-9718
Warren.Olandria@uspto.gov
RESPONSE GUIDANCE