Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1036119 Filing date: 02/14/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 88094045 Applicant IMH Columbia, LLC Applied for Mark THE MERRIWEATHER Correspondence DAVID V. RADACK Address ECKERT SEAMANS CHERIN & MELLOTT, LLC 600 GRANT STREET, 44TH FLOOR PITTSBURGH, PA 15219 UNITED STATES [email protected], [email protected], lamor- [email protected] 412-566-6777 Submission Applicants Request for Remand and Amendment Attachments MOTION TO REMAND THE MERRIWEATHER.pdf(15649 bytes ) THE MERRIWEATHER APPEAL BRIEF.pdf(88500 bytes ) EXHIBIT A THE MERRIWEATHER_Part1.pdf(3027937 bytes ) EXHIBIT A THE MERRIWEATHER_Part2.pdf(2942201 bytes ) EXHIBIT B THE MERRIWEATHER.pdf(3242075 bytes ) EXHIBIT C THE MERRIWEATHER.pdf(314919 bytes ) EXHIBIT D MERRIWEATHER.pdf(29279 bytes ) EXHIBIT E THE MERRIWEATHER.pdf(183581 bytes ) EXHIBIT F MERRIWEATHER.pdf(403263 bytes ) EXHIBIT G THE MERRIWEATHER .pdf(2218486 bytes ) EXHIBIT H MERRIWEATHER.pdf(100152 bytes ) EXHIBIT I THE MERRIWEATHER Part1.pdf(3482996 bytes ) EXHIBIT I THE MERRIWEATHER Part2.pdf(4474539 bytes ) EXHIBIT I THE MERRIWEATHER Part3.pdf(5104906 bytes ) EXHIBIT J THE MERRIWEATHER.pdf(300909 bytes ) Filer's Name David V. Radack Filer's email [email protected], [email protected], ipdock- [email protected] Signature /David V. Radack/ Date 02/14/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In re: IMH Columbia, LLC Law Office 114 Serial No. 88/094,045 Examining Attorney – Brian J. Pino Filed August 27, 2018 For THE MERRIWEATHER Attorney Reference No. 093504-06280 MOTION TO SUSPEND AND REMAND FOR CONSIDERATION OF ADDITIONAL EVIDENCE Applicant, IMH Columbia, LLC, (“Applicant”) requests that the Board suspend the appeal regarding Serial No. 88/094,045 and remand the application to the Trademark Examining Attorney for reconsideration of new evidence. Under 37 CFR § 2.142(d), the evidentiary record in an application should be complete prior to filing of the ex parte appeal; if the appellant wishes to introduce additional evidence after an appeal is filed, the appellant should submit a request to the Board to suspend the appeal and remand the application for further examination. See also TBMP § 1207.01. Applicant previously submitted additional evidence in the form of a consent agreement in order to overcome the 2(d) refusal. 4 TTABVUE 1. The application was remanded to the Examining Attorney, who withdrew the 2(d) refusal but maintained the 2(e)(4) refusal. 5 TTABVUE 1; 6 TTABVUE 1. After it was made clear to the Applicant that the Examining Attorney was going to maintain the 2(e)(4) refusal, Applicant was made aware of additional evidence that will support its argument against the 2(e)(4) refusal that had not been previously made of record. 1 Applicant therefore requests that the Board suspend the appeal and remand the application to the Examining Attorney so that the Examining Attorney has the opportunity to review this additional evidence. For ease of reference and review, Applicant attaches the appeal brief to the Board with the additional evidence referenced in the Exhibits to the brief. Applicant respectfully submits that the additional evidence is highly persuasive of registrability, and respectfully requests that the Examining Attorney withdraw his Section 2(e)(4) refusal based on the attached arguments and additional evidence which Applicant wishes to make of record. Respectfully submitted, Date: __February 14, 2019____ s/David V. Radack/______ David V. Radack Jenna P. Torres Eckert Seamans Cherin & Mellott, LLC U.S. Steel Tower 600 Grant Street, 44th Floor Pittsburgh, PA 15219 [email protected] 412-566-6000 ATTORNEYS FOR APPLICANT 2 TABLE OF CONTENTS I. DESCRIPTION OF THE RECORD ...................................................................................1 II. STATEMENT OF THE ISSUES.........................................................................................2 III. RECITATION OF FACTS ..................................................................................................2 IV. ARGUMENT .......................................................................................................................3 A. Applicant’s Mark has Meanings Other Than a Surname ...............................................3 B. The Look and Feel and Structure of Applicant’s Entire Mark is Not That of a Surname ........................................................................................................................6 C. “Merriweather” is a Rare Surname ................................................................................7 D. No Person Associated with Applicant has the Surname Merriweather .........................8 E. All Doubts are Resolved in Favor of the Applicant……………………………………8 V. CONCLUSION ....................................................................................................................9 i TABLE OF CASES In re Joint-Stock Company Baik, 84 USPQ2d 1921 (TTAB 2007)…………………………….7, 8 In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995)…………………….3, 7, 8 Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411 (Fed. Cir. 2017)…….3, 6 In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071 (TTAB 1989)……………………………...5 See Ex Parte Omaha Cold Storage Co., 111 USPQ 189 (Com’r Pat & Trademarks 1956)…….. .5 In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994)……………………………....3 In re United Distillers PLC, 56 USPQ2d 1220 (TTAB 2000)…………………………………....7 In re Woman’s Publishing Co., 23 USPQ2d 1867, 1878 (TTAB 1992)………………………….4 ii I. DESCRIPTION OF THE RECORD On August 27, 2018, Applicant filed a Section 1(b) application for registration of THE MERRIWEATHER for “hotel services” in Class 43. On December 13, 2018, the Examiner issued an Office action requiring additional information from the Applicant and initially refusing registration based on an alleged likelihood of confusion with the marks Registration No. 4,839,304 for MERRIWEATHER for “entertainment services, namely, providing a facility for musical concerts, music festivals and live show performances; entertainment, namely live music concerts; arranging and conducting of concerts; conducting entertainment exhibitions in the nature of music festivals; entertainment in the nature of music festivals” in Class 41. The Examiner also initially refused registration on the ground that Applicant’s mark is primarily merely a surname under Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4). Applicant responded to the first Office action on April 17, 2019 providing the requested information and arguing against the Section 2(d) refusal based on the dissimilarity of the services, and arguing against the Section 2(e)(4) refusal on the grounds that the surname is rare, no one associated with the Applicant has the surname, there are other recognized meanings for the term, and the applied-for mark does not have the structure and pronunciation of a surname. The Examiner issued a second and final Office action on April 29, 2019 maintaining the Section 2(d) refusal based on an alleged likelihood of confusion with the mark of the cited registration, the Section 2(e)(4) primarily merely a surname refusal, and the request for information. Applicant filed a notice of Appeal on October 28, 2019. Applicant then filed a Motion to Suspend and Remand for Reconsideration with the Trademark Trial and Appeal Board (“TTAB”) 1 on November 27, 2019. In its Request for Reconsideration, Applicant submitted a consent from the owner of the registration cited in the Examiner’s 2(d) Refusal. The Examiner issued a Reconsideration Letter on December 17, 2019 maintaining the Section 2(e)(4) refusal and withdrawing the 2(d) refusal and the information requirement. The Board resumed the proceedings on December 17, 2019, granting Applicant sixty (60) days to file its appeal brief. II. STATEMENT OF THE ISSUES The only remaining issue on this appeal is whether Applicant’s mark THE MERRIWEATHER for “hotel services” in Class 43 is primarily merely a surname under Section 2(e)(4) of the Trademark Act. III. RECITATION OF FACTS Applicant IMH Columbia, LLC, DBA Sheraton Columbia Town Center (“Applicant”) is a hotel operator. On August 27, 2018, Applicant filed an application to register the mark THE MERRIWEATHER for “hotel services” in Class 43, on the basis of 1(b), intent to use. (See Application). As noted in response to the Examiner’s request for information, Applicant does not yet have a website showing use of the mark in connection with the applied-for services, and the mark is not yet in use. (See April 17, 2019 response to Office Action). Applicant intends to operate a hotel under the mark THE MERRIWEATHER. As also noted in the response to the Examiner’s request for information, no person associated with Applicant has the surname Merriweather. (See April 17, 2019 response to Office Action). 2 IV. ARGUMENT In determining whether or not the mark of a pending application is primarily merely a surname under Section 2(e)(4) of the Lanham Act, the analysis is whether when the mark is viewed in relation to the goods or services for which registration is sought, its primary significance to the purchasing public is that of a surname. Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017). The Trademark Trial and Appeal Board