United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90031624
Mark: BEZOS EARTH FUND
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Correspondence Address: 1900 SIXTEENTH STREET, SUITE 1400
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Applicant: Fellowship Ventures LLC
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Reference/Docket No. 134251-4003
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: October 13, 2020
SEARCH OF USPTO DATABASE OF MARKS
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.
Applicant has applied to register the mark BEZOS EARTH FUND (in standard characters) for “Public awareness services; promoting public awareness; promoting awareness; Promoting public interest and awareness” in International Class 35 and “Charitable foundation services; charitable services; charitable donation services; financial grant services; charitable fundraising services; Administering monetary charitable contributions” in International Class 36.
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.
Regarding the second factor above, the application directly identifies Jeffrey Bezos as the person whose name is identified in the mark. Thus, the term “BEZOS” is used as a surname by those who connected to the applicant.
Regarding the fourth factor, the attached Internet evidence shows that the surname “BEZOS” has roots in Spain, and is most commonly found there. 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).
Finally, with regard to the fifth factor, the mark is in standard character form and lacks any stylization that could potentially remove the mark’s primary significance from that of a surname.
Specifically, the attached evidence from Lexico.com shows that “earth” refers to “the planet on which we live; the world.” The same source defines a “fund” is “a sum of money saved or made available for a particular purpose.” Thus, the wording merely describes a feature of applicant’s services because applicant offers various charitable services that involve distributing or contributing money, and the services are so broadly described as to necessarily include earth conservationist causes.
Each of the five factors listed above weighs in favor of a determination that the mark is primarily merely a surname.
Accordingly, registration is refused pursuant to Section 2(e)(4) of the Trademark Act.
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.
(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).
ADVSIORY – DISCLAIMER REQUIRED
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “FUND” 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.
Applicant should note the following potential grounds for refusal.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
CLAIM OF OWNERSHIP OF APPLICATIONS
Applicant may provide evidence of ownership of the marks by satisfying one of the following:
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;
(2) Submit copies of documents evidencing the chain of title; or
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of Application Serial Nos. 88211360, 88211368, 88211378, 88328749, 88328755, 88328757, 88328961, 88328973, 88328978, 88328980, 88413174, 88762966, 88790414, 88821419, 88821426, 88946826, 88946845, 88978580, & 88978581.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, check the box for “Miscellaneous Statement” and write in the free form text field for the “Miscellaneous Statement” that “Applicant is the owner of Application Serial No(s). 88211360, 88211368, 88211378, 88328749, 88328755, 88328757, 88328961, 88328973, 88328978, 88328980, 88413174, 88762966, 88790414, 88821419, 88821426, 88946826, 88946845, 88978580, & 88978581,” inserting the relevant application serial number(s); and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
IDENTIFICATION & CLASSIFICATION OF SERVICES
For instance, all of the “awareness” type services need the actual subject matter or field clarified for the record.
In addition, the “charitable” services need the actual type of service to be specified here, as the nature and type of charitable service is not specified and the wording could identify services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. “Charitable services” in an identification merely indicates that the services are provided for charitable purposes, but does not set forth the actual activity provided for those purposes. TMEP §1402.11(d).
Charitable services are generally classified according to the particular charitable activity provided. Id. Non-monetary charitable donation services are generally classified according to the service-related activity of the provided goods. Id. Examples of charitable services or non-monetary charitable donation services include the following: “charitable services, namely, providing office equipment to those in need” is classified in International Class 35 with other business services; “charitable fundraising services” is in International Class 36 with other financial or monetary services; “charitable services, namely, providing tutoring in the field of math for underprivileged students” is in International Class 41 with other educational services; “charitable services, namely, providing temporary shelter for the homeless” is in International Class 43 with other temporary accommodation services; and “charitable services, namely, providing first aid supplies to those in need” is in International Class 44, where the service-related activity provided by these supplies is medical services.
Therefore, to enable proper examination of the application, applicant must specify the nature of the “charitable services” and classify the services accordingly. See id.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers
guidance and/or shows the changes being proposed for the identification of services. If there is wording in the applicant’s version of the identification of services
which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in
standard font, not in bold, in italics, underlined and/or in ALL CAPS.
Applicant may adopt the following identification, if accurate:
International Class 35: Public awareness services OF ____________ {specify field or subject matter}; promoting public awareness OF ____________ {specify field or subject matter}; promoting awareness OF ____________ {specify field or subject matter}; Promoting public interest and awareness OF ____________ {specify field or subject matter}
International Class 36: Charitable foundation services, NAMELY, PROVIDING FINANCIAL
ASSISTANCE FOR PROGRAMS AND SERVICES OF OTHERS; charitable services, NAMELY, PROVIDING FINANCIAL SUPPORT TO DISADVANTGED INDIVIDUALS IN THE UNITED STATES AND OTHER COUNTRIES FOR
THE PURPOSE OF FACILITATING HEALTH, WELLNESS, AND ECONOMIC DEVELOPMENT; charitable donation services; financial grant services, NAMELY, PROVIDING
GRANTS FOR ____________ {specify purpose or activity}; charitable fundraising services; Administering monetary charitable contributions
International Class 41: CHARITABLE DONATION SERVICES, NAMELY, PROVIDING EDUCATIONAL CLASSES IN THE FIELD OF HEALTHCARE
International Class 43: CHARITABLE SERVICES, NAMELY, PROVIDING TEMPORARY SHELTER FOR THE HOMELESS
International Class 44: CHARITABLE SERVICES, NAMELY, PROVIDING FIRST AID SUPPLIES TO THOSE IN NEED
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 2 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
For this application to proceed, applicant must explicitly address each refusal, potential refusal, and 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.
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.
Cameron McBride
/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@uspto.gov
RESPONSE GUIDANCE