United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88958367
Mark: DOC WATSON
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Correspondence Address:
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Applicant: INTERNATIONAL BUSINESS MACHINES CORPORAT ETC.
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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: September 04, 2020
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.
Search of Office’s Database of Marks
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.
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 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.
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, where, as here, 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 attached evidence from www.whitepages.com and http://advance.lexis.com establishes the surname significance of WATSON. This evidence shows WATSON appearing more than 100 times as a surname in a nationwide phone directory of names and 516,257 times 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.
Addition of the wording DOC in the applied-for mark does not diminish its surname significance. This is because DOC is merely descriptive of applicant’s services, and combining a surname with a term that is merely descriptive 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). Doc means doctor, which is “a person who has earned one of the highest academic degrees” and “to give medical treatment to”. Applicant’s pharmaceutical services are provided by doctors, and terms that describe the provider of a service may also be merely descriptive of the service. See attached evidence from www.bakerandgilcrhist.com; In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory data analysis services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q). Similarly, because “to give medical treatment to” is synonymous with applicant’s medical services, DOC is merely descriptive of a characteristic of the services. See, e.g., Identification of Services in Application.
Further, the attached evidence from www.merriam-webster.com establishes that WATSON has no recognized meaning other than as a surname. Such evidence 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); TMEP §1211.02(b)(vi).
In addition, WATSON is the surname of a founder of applicant’s business. See, e.g., attached evidence from http://en.wikipedia.org. This is also probative evidence of the term’s surname significance. TMEP §1211.02(b)(iv); see, e.g., 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).
Supplemental Register
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.
An allegation of use has various legal requirements, including providing verified dates of first use of the mark, a verified statement that the mark is in use in commerce, a specimen showing the mark as actually used in commerce for each international class, and a fee. 37 C.F.R. §§2.76, 2.88; TMEP §806.01(b). In addition, certain time restrictions apply to filing an amendment to allege use or statement of use. See 37 C.F.R. §§2.76(a), 2.88(a); TMEP §§1104.03, 1109.04. See the ITU basis webpage for more information about an amendment to allege use or statement of use. To submit one, use the Trademark Electronic Application System (TEAS) Allegation of Use form.
(1) Use of the registration symbol ® with the registered mark in connection with the designated services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Advisory Regarding Disclaimer
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “DOC” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Response to Office Action Required to Avoid Abandonment
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.
How to respond. Click to file a response to this nonfinal Office action.
Jeanine Gagliardi
/Jeanine Gagliardi/
Examining Attorney
Law Office 120
571-272-3177
jeanine.gagliardi@uspto.gov
RESPONSE GUIDANCE