UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/459214
APPLICANT: TAYLOR PRECISION GROUP, LLC
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CORRESPONDENT ADDRESS: MARK A. CANTOR BROOKS & KUSHMAN P.C. 1000 TOWN CENTER, 22ND FLOOR SOUTHFIELD, MICHIGAN 48075
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom116@uspto.gov
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MARK: TAYLOR
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CORRESPONDENT’S REFERENCE/DOCKET NO: TPP 0155 TUS
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 76/459214
This letter responds to the applicant’s communication filed on September 12, 2003. The applicant (1) argued against the refusal to registration and (2) claimed ownership of a prior registration. Only No. 2 is fully acceptable.
The examining attorney refused 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).
The applicant argued against the refusal citing several prior registrations and reserved the right to submit evidence of acquired distinctiveness. 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.
Pending a response to the above, the refusal to registration under Section 2(e)(4) of the Trademark Act is maintained and continued.
Applicant may respond to this Office action using the Office’s Trademark Electronic Application System (TEAS) at <http://www.gov.uspto.report/teas/index.html>. When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces processing time and eliminates the possibility of data entry errors by the Office. Applicants are strongly encouraged to use TEAS to respond to Office actions. Applicants using TEAS should not submit a duplicate paper copy of the response.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Karen Bracey/
Examining Attorney
Law Office 116
703-306-7914; 703-746-8116 (fax)
ecom116@uspto.gov (formal response only)
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.