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  76/465853

 

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

 

REFUSAL SURNAME- Section 2(e)(4)

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 PowerFinder, 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.

 

APPLICANT MAY RESPOND   

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Please note that the following issues are being raised in this letter in order to address every problem with the application.  However, this does not obviate the original determination of non-registrability by the examining attorney.  Applicant must still respond to the refusal by submitting arguments in support of registration. 

 

INFORMALITIES  

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

 

Identification and Classification of Goods/Services

The identification and classification of goods/services is unacceptable in its present form and must be amended to read as follows,  if accurate: 

 

“Luggage; racing gear bags; duffel bags; driver race sports bags; helmet bags; waist and fanny packs; umbrellas.”

                        International Class 18.

 

            “Clear plastic holders for racing credentials and badges.”

            International Class 20.

 

            “Mugs, travel mugs; insulated drink holders; portable insulated thermal coolers.”

            International Class 21.

 

            See attached pages from the identification manual for further suggestions.

 

The identifications of goods/services for International Class 9, 12, 25 and 35are acceptable.  For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  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/services that are not within the scope of goods/services set forth in the present identification.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods/services in each class and list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the 7 fees already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

Declaration

The applicant failed to include required wording in the declaration, i.e. the applicant did not claim to be the owner of the mark.  The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §§1051(b), 1126(d) or 1126(e), he/she believes the applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

Ownership of Prior Registrations

If the applicant is the owner of Registration Nos. 1243426, 1243427, and 1263417, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

OFFICE SEARCH

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.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

Tracy Cross

/Tracy Cross/

Examining Attorney

Law Office 103

Phone: (703) 308-9103 ext. 224

Fax:     (703) 746-8103

E-mail:  ecom103@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.