Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/440487

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Surname Refusal :

 

The examining attorney refuses registration on the Principal Register because the mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. Section 1052(e)(4); TMEP section 1211.  The examining attorney must consider the primary significance of the mark to the purchasing public to determine whether a term is primarily merely a surname.  In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (CCPA 1975).  Please see the attached evidence from PHONEDISC U.S.A., establishing the surname significance of the mark.

 

An applicant may register a surname under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f), by establishing acquired distinctiveness.  The applicant may present any of the following to establish distinctiveness.

 

(1) The applicant may rely on a claim of ownership of one or more prior registrations on the Principal Register for a mark which is the same as the mark in this application for the same or related goods.  37 C.F.R. Section 2.41(b); TMEP section 1212.04.

 

(2) The applicant may provide a statement that the mark has become distinctive of the applicant's goods by reason of substantially exclusive and continuous use in commerce by the applicant for the five years next preceding the date of the statement.  The applicant must verify this statement with an affidavit or a declaration under 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.41(b); TMEP section 1212.05.

 

(3) The applicant may submit actual evidence of acquired distinctiveness.  37 C.F.R. Section 2.41(a); TMEP section 1212.06.

 

Informalities :

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Identification of Goods :

 

The identification of goods is unacceptable as indefinite because it may include goods in other international classes.  In rare circumstances, the Office may accept an identification of goods that refers to “a full line of” a genre of products.  In order to qualify for the use of such terminology, the line of products must be virtually all classifiable in one class.  The applicant may adopt the following identification, if accurate:  full line of bicycle structural parts.  TMEP section 804 and 1402.03..

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Substitute Specimens :

 

The specimen is unacceptable as evidence of actual trademark use because it does not support use of the mark for a full line of goods, merely just one bicycle part.  The applicant must submit a specimen showing the mark as used in commerce that supports a full line of bicycle parts.  37 C.F.R. §2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

 

General Information :

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

 

 

 

/Won T. Oh/

Law Office 104

(703) 308 - 9104 x-176

ecom104@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.