To: | Traeger Pellet Grills, LLC (trademarks-ch@btlaw.com) |
Subject: | U.S. Trademark Application Serial No. 90298898 - TRAEGER - N/A |
Sent: | March 29, 2021 12:07:33 PM |
Sent As: | ecom124@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90298898
Mark: TRAEGER
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Correspondence Address: |
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Applicant: Traeger Pellet Grills, LLC
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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: March 29, 2021
Search Results
REFUSAL UNDER SECTION 2(e)(4) – MARK IS 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 Colors in Optics, Ltd., 2020 USPQ2d 48321, at *1-2 (TTAB 2020) (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 or factors 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 Colors in Optics, Ltd., 2020 USPQ2d 48321, at *2 (citing Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1480 (TTAB 2017)); 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, establishing the surname significance of Traeger. This evidence shows the applied-for mark appearing 1,434 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.
Additionally, the mark is perceived as a surname because it is the surname of applicant’s founder. A term that is the surname of an individual applicant or that of an officer, founder, owner, or principal of applicant’s business is probative evidence of the term’s surname significance. TMEP §1211.02(b)(iv); see, e.g., In re Etablissements Darty et Fils, 759 F.2d 15, 16, 225 USPQ 652, 653 (Fed. Cir. 1985) (holding DARTY primarily merely a surname where “Darty” was the surname of applicant’s corporate president); 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); In re Integrated Embedded, 120 USPQ2d 1504, 1507 (TTAB 2016) (holding BARR GROUP primarily merely a surname where BARR was the surname of the co-founder and applicant’s corporate officer and GROUP was found “incapable of lending source-identifying significance to the mark”); Miller v. Miller, 105 USPQ2d 1615, 1620, 1622-23 (TTAB 2013) (holding MILLER LAW GROUP primarily merely a surname where “Miller” was the surname of the applicant and the term “law group” was found generic).
The attached evidence from Wikipedia shows that applicant’s founder is Joe Traeger. Accordingly, this evidence is probative of the mark’s surname significance.
For these reasons, the primary significance of the mark is a surname, and the mark is refused registration on the Principal Register under Section 2(e)(4).
Surname Refusal Response Options
(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; 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) Five Years’ Use: Applicant may submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.” 37 C.F.R. §2.41; TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
(3) 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).
This requirement applies to class 9 only
The identification of goods must be amended because some of the wording is indefinite.
The wording “providing a website featuring downloadable recipes” is indefinite and must be clarified because "providing a website" does not itself indicate a definite or classifiable service. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11(a)(vii). Applicant may substitute the following wording, if accurate: “Downloadable electronic data files featuring recipes, available for download from a website.”
Applicant may adopt the following wording in International Class 9, if accurate: downloadable mobile application software for accessing and reading recipes.
To address the indefinite wording discussed above, applicant may adopt any or all of the following identification of goods, if accurate. Suggested changes are indicated in bold, strikethrough, and underlined fonts.
International Class 9: downloadable electronic data files featuring cook books; downloadable electronic data files featuring recipes; providing a website featuring downloadable
recipes Downloadable electronic data files featuring recipes, available for download from a website; downloadable mobile application software featuring
for accessing and reading recipes.
International Class 16: cook books; recipe books
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.
Responding to this Office action
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.
How to respond. Click to file a response to this nonfinal Office action.
/April Reeves/
April E. Reeves
Examining Attorney
Law Office 124
(571) 272-3681
april.reeves@uspto.gov
RESPONSE GUIDANCE