UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/454163
APPLICANT: Baldwin Pianos, Inc.
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CORRESPONDENT ADDRESS: LUCIAN WAYNE BEAVERS WADDEY & PATTERSON 414 UNION STREET, SUITE 2020 BANK OF AMERICA PLAZA NASHVILLE, TN 37219 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom114@uspto.gov
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MARK: ELLINGTON
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CORRESPONDENT’S REFERENCE/DOCKET NO: N8027
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/454163
The assigned examining attorney has reviewed the referenced application and determined the following.
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. §1052(d). TMEP §704.02.
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. §1052(e)(4); TMEP §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 (C.C.P.A. 1975). Please see the attached evidence from a computerized phone directory database, establishing the surname significance of the mark. TMEP §§1211 et seq.
An applicant may register a surname under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by establishing acquired distinctiveness. The applicant may present any of the following to establish distinctiveness. TMEP §§1211 and 1212.02(a).
(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. §2.41(b); TMEP §§1212.04 et seq.
(2) The applicant may provide a statement that the mark has become distinctive of the applicant’s goods/services 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. §2.20. 37 C.F.R. §2.41(b); TMEP §§1212.05 et seq.
(3) The applicant may submit actual evidence of acquired distinctiveness. 37 C.F.R. §2.41(a); TMEP §§1212.06 et seq.
Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
The examining attorney also refuses registration because the mark consists of or comprises matter which may falsely suggest a connection with the well-known musician Duke Ellington and/or his estate. Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §§1203.03, 1203.03(e) and 1203.03(f). See generally University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); University of Alabama v. BAMA‑Werke Curt Baumann, 231 USPQ 408 (TTAB 1986); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428 (TTAB 1985).
NOTE: Following response to the above, prosecution will be suspended pending disposition of the opposition proceeding pending with respect to applicant’s copending SN 76/366420.
Further action awaits response to the above.
/David H. Stine/
Trademark Attorney
Law Office 114
(703)308-9114 x154
ecom114@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.