Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  July 27, 2020

 

 

 

INTRODUCTION

 

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 RESULTS

 

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.

 

SUMMARY OF ISSUES:

·        Section 2(e)(4) Refusal – Primarily Merely Surname

·        Amendment of Identification of Goods and Services Required

 

 

SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY 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 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, whitepages.com, ancestry.com, and forebears.io, establishing the surname significance of "MAYBOURNE".  This evidence shows the applied-for mark appearing as a surname in a nationwide phone directory of names, and 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.  In addition, the attached evidence from lexisnexis.com, whitepages.com, and forebears.io shows the surname significance of "MAYBORNE", "MAYBOURN", and "MAYBORN", which are alternative spellings of the surname "MAYBOURNE".  Moreover, this evidence suggests that the surname "MAYBOURNE" has the structure and pronunciation of a surname.   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).

 

Although “MAYBOURNE” appears to be a relatively rare surname, 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).

 

Combining a surname with a term that is merely descriptive, primarily geographically descriptive or deceptively misdescriptive, or generic of an applicant’s goods and 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, in this case, the wording "BEVERLY HILLS" is primarily geographically descriptive of the applicant's goods and services, as evidenced by the applicant's website at maybournebeverlyhills.com, which indicates that the applicant's business address is in Beverly Hills, California. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

 

Section 2(f) Claim Advisory

 

An intent-to-use applicant who has used the same mark on related goods and services may assert a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods and services, the mark has become distinctive of the goods and services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).

 

The Trademark Trial and Appeal Board has set forth the following two requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

 

(1)       Applicant must establish that the same mark has acquired distinctiveness as to the other goods and services, by submitting evidence such as ownership of an active prior registration for the same mark for sufficiently similar or related goods and services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and services; and

 

(2)       Applicant must show sufficient relatedness of the goods and services in the intent-to-use application and those for which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and services in the application upon use.  The showing necessary to establish relatedness will be decided on a case-by-case basis and will depend upon the nature of the goods and services involved and the language used to identify them in the application.

 

TMEP §1212.09(a); see Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1770-71 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999).

 

 

Supplemental Register Advisory

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

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.

 

To amend the application filing basis from an intent-to-use application under Trademark Act Section 1(b) to a use in commerce basis under Section 1(a), applicant must file, prior to approval of the mark for publication, an amendment to allege use that satisfies the requirements of 37 C.F.R. §2.76.  See 15 U.S.C. §1051(c); 37 C.F.R. §2.35(b)(8); TMEP §§806.01(b), 1103.

 

The following must be submitted in an amendment to allege use in order to amend an application to use in commerce under Section 1(a):

 

1)     The following statements:  “Applicant believes applicant is the owner of the mark” and “the mark is in use in commerce.”

 

2)     The date of first use of the mark anywhere on or in connection with the goods and services.

 

3)     The date of first use of the mark in commerce as a trademark or service mark.

 

4)     The goods and/or services specified in the application.

 

5)     A specimen showing how applicant uses the mark in commerce for each class of goods for which use is being asserted.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.

 

6)     A filing fee of $100 per class for each international class of goods for which use is being asserted (current fee information should be confirmed at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

7)     Verification of the above (1) through (4) requirements in an affidavit or signed declaration under 37 C.F.R. §2.20.

 

See 37 C.F.R. §§2.6(a)(2), 2.56, 2.76(b); TMEP §§1104.08, 1104.10(b)(v).

 

An amendment to allege use may be filed online at http://www.gov.uspto.report/trademarks/teas/index.jsp.  An amendment to allege use is not considered a response to an Office action.  37 C.F.R. §2.76(h); TMEP §1104.  Applicant must file a separate response to any outstanding Office action.  TMEP §1104; see 37 C.F.R. §2.76(h).

 

 

AMENDMENT OF IDENTIFICATION OF GOODS AND SERVICES REQUIRED

 

The identification of goods and services is unacceptable because it contains a significant amount of indefinite wording and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

For example, the applicant must clarify indefinite wording in the identification of goods and services, such as the wording "printed matter", "periodical publications", "cartoons", "menus", "albums", and "pads" in International Class 016, "banqueting services" in International Class 043, and "cosmetic services", health spa services", and "spa services" in International Class 044, to specify particular goods and services because the wording is indefinite and does not specify particular goods and services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods and services are.  Similarly, the applicant should clarify wording such as "address pads" and "journals" in International Class 016, "brokering reservations" and "child minding services" in International Class 043, and "provision of beauty treatments and therapies" and "depilatory services" in International Class 044.

 

The wording "educational and instructional materials" in International Class 016 and “provision of facilities for meetings, functions, conferences and conventions” in the identification of services for International Class 043 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass printed materials in International Class 016, electronic publications in International Class 009, or online publications in International Class 041, and provision of facilities for business meetings in International Class 035, provision of sports and entertainment facilities in International Class 041, and provision of general purpose and social meeting and event facilities in International Class 043, respectively.

 

The applicant must also indicate the field or subject matter of its printed publications, e.g., magazines, books, printed instructional and teaching materials, and educational and instructional materials.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(e).  For example, “magazines in the field of medicine,” “newsletters about television programs,” and “books and pamphlets in the field of financial classification of companies and securities,” are acceptable in International Class 016.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications; e.g., “general feature magazines” are acceptable in International Class 016.  TMEP §1402.03(e). 

 

The identification for “stencil kits” in International Class 016 is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03.  Kits generally consist of a group of components that (1) share a common theme, or (2) are used to make a particular product.  See TMEP §1401.05(a).  Applicant must amend the identification to list the components, or clarify the product being made, using the guidelines below.  See id.

 

For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first.  See id.  Generally, a kit is classified in the same international class as the majority of the components in the kit.  See id.  For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions” are in International Class 3, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 8, and “printed instructions” in International Class 16 listed after the International Class 3 components).

 

If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit.  See id.  For example, “tool kits comprising hand saws and power-driven saws” are in International Class 8 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 7 (the class for “power-driven saws”).

 

For kits that make a particular product, the identification must specify the product being made using the following format:  “kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].”  See id.  Generally, this type of kit is classified in the international class of the product being made.  For example, “kits for making wine consisting of fresh grapes and chemicals for fermenting wine” are classified in International Class 33 (the class for “wine”).

 

For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).

 

Applicant may adopt the following identification, if accurate: 

 

International Class 016:  "printed matter, namely, [specify printed matter within this International Class, e.g., newspapers in the field of hotels and leisure, photographs in the field of hotels and leisure, magazines in the field of hotels and leisure]; periodical publications, namely, printed periodicals in the field of [indicate subject matter, e.g., hotels and leisure, travel, dining]; magazines in the field of [indicate subject matter, e.g., hotels and leisure, travel, dining]; books in the field of [indicate subject matter, e.g., hotels and leisure, travel, dining]; cookery books, namely, cook books; recipe books; posters; calendars; prints; art prints; greeting cards; notepads; address pads in the nature of writing pads for addresses; diaries; printed instructional and teaching materials in the field of [specify area of use or subject matter, e.g., hotels and leisure, restaurant management, hospitality]; blank journals; cartoons, namely, [specify cartoons within this International Class, e.g., cartoon prints, newspaper cartoons, printed cartoon strips]; printed educational and instructional materials in the field of [specify area of use or subject matter, e.g., hotels and leisure, restaurant management, hospitality]; photographs; pictures; menus, namely, [specify menus within this International Class, e.g., printed menu inserts, printed menu boards]; pen holders; pens; pencils; stickers; albums, namely, [specify albums within this International Class, e.g., photo albums, scrapbook albums, sticker albums, stamp albums, wedding albums]; address books; date books; postcards; note cards; notebooks; writing papers; stencil kits, namely, kits comprised primarily of stencils; pads, namely, [specify pads within this International Class, e.g., writing pads, sketch pads, memo pads, legal pads, drawing pads]; postage stamps; stationery; tissue papers; paper decorations for cakes; baking paper; containers and cases of paper or cardboard for baking"

 

International Class 043:  "hotel services; restaurant, café and bar services; banqueting services, namely, [specify banqueting services within this International Class, e.g., catering services, providing banquet facilities, rental of banquet facilities for wedding receptions] and; catering services; brokering reservations, namely, making reservations and bookings for hotels, boarding houses, and other temporary lodging or the like; arranging and booking hotels and temporary housing accommodations for others service; provision of facilities for social meetings not being business meetings, social functions, conferences, and conventions; reservation services for temporary accommodation; child minding services in the nature of child care services; information, advice and consultancy relating to the aforesaid services"

 

International Class 044:  "hairdressing and hair styling services; beauty care services, namely, provision of beauty treatments and therapies; pedicure and manicure services; depilatory hair removal services; cosmetic services, namely, [specify cosmetic services within this International Class, e.g., cosmetic electrolysis, cosmetic surgery, cosmetic analysis, cosmetic skin care services, cosmetic tattooing services, cosmetic body care services]; health care services; health spa services, namely, [clarify nature of health spa services within this International Class, e.g., cosmetic body are services, providing weight loss programs, health spa services for health and wellness of the body and spirit]; spa services, namely, [specify spa services within this International Class, e.g., beauty spa services in the nature of cosmetic body care, day spa services in the nature of nail care, health spa services for health and wellness of the body and spirit]; massage services; flower arranging services; information, advice and consultancy relating to the aforesaid services"

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

 

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

 

 

Yi, Crystal

/Crystal H. Yi/

Examining Attorney

Law Office 123

571.270.0763

crystal.yi@uspto.gov

 

 

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

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA 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 July 27, 2020 for

U.S. Trademark Application Serial No. 88894940

 

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. 

 

 

Yi, Crystal

/Crystal H. Yi/

Examining Attorney

Law Office 123

571.270.0763

crystal.yi@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 July 27, 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.”