Priority Action

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

PRIORITY ACTION

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:  January 28, 2020

 

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On January 27, 2020, the examining attorney and Mr. Michael A. Cohen, Esq. discussed the issue below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

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 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 lexisnexis.com and ancestry.com, establishing the surname significance of LEUPOLD.  This evidence shows the applied-for mark appearing 539 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 and about 2,000 times in Census and Voter lists on ancestry.com.

 

With regard to the second element, applicant’s website indicates the surname LEUPOLD is associated with applicant such that it was the surname of one of its founders, Mr. Fred LEUPOLD.  See attached Internet evidence from leupold.com.

 

With regard to the third element, 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).  The attached Internet evidence shows that LEUPOLD does not appear in the dictionary.  See attached dictionary evidence from Merriam-Webster Dictionary and Collins English Dictionary.  Thus, this term appears to have no recognized meaning or significance other than as a surname. 

 

Considering the fourth element, 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). The attached Internet evidence from forebears.io shows there are other variants and similar surnames to LEUPOLD, such as LEIPOLD, LIEPOLD, and LEPOLD, which demonstrates that the primary significance of LEUPOLD is that of a surname because it has the structure and pronunciation of a surname.

 

Considering all of the above, the primary significance of LEUPOLD to the average purchaser is primarily merely a surname.  Thus, registration for the applied-for mark is refused pursuant to Trademark Act Section 2(e)(4).

 

Response Options to Overcome Section 2(e)(4) Surname Refusal

 

A mark deemed primarily merely a surname may be registered on the Principal Register under Trademark Act Section 2(f) based on a claim of acquired distinctiveness.  See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1211, 1212.  Applicant may respond by asserting a claim of acquired distinctiveness based on one or more of the following:

 

(1)               Prior Registrations:  Applicant may claim ownership of one or more active prior registrations on the Principal Register of the same mark for goods and/or services that are sufficiently similar to those named in the pending application.  37 C.F.R. §2.41(a)(1); TMEP §§1212, 1212.04.  Applicant may do so by submitting 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). _______ on the Principal Register for the same mark for sufficiently similar goods and/or services.”

 

TMEP §1212.04(e).

 

(2)        Other Evidence:  Applicant may submit other evidence of acquired distinctiveness, with the following statement, if accurate:  “The evidence shows that the mark has become distinctive of the goods and/or services.”  37 C.F.R. §2.41(a)(3); TMEP §1212.06.  Such additional evidence may include “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).”  In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). 

 

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).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.

 

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.  

 

 

Christopher Hoffman

/Christopher Hoffman/

Trademark Examining Attorney

Law Office 128

(571)272-3351

christopher.hoffman@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 28, 2020 for

U.S. Trademark Application Serial No. 88634651

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Christopher Hoffman

/Christopher Hoffman/

Trademark Examining Attorney

Law Office 128

(571)272-3351

christopher.hoffman@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 28, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”