Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/523458

 

This letter responds to the applicant's communication filed on May 9, 2005.

 

Section 2(e)(4) Final Refusal

 

Registration was refused under Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §§1211 et seq., because the subject matter for which registration is sought is primarily merely a surname.

 

The applicant argues that the mark is a rare surname and that it is highly unlikely that the primary significance of the mark to the purchasing public would be as a surname. In addition, the applicant argues that the term SEGURA means “sure” in Spanish and therefor would not be regarded as primarily merely a surname. The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(e)(4) is maintained and made FINAL.

 

The applicant applied to register the mark SEGURA for “CLOTHING, NAMELY SHIRTS, T-SHIRTS, PULLOVERS, SOCKS, UNDERPANTS, PANTS, JACKETS, WAISTCOATS, WATERPROOF RAINWEAR, SINGLETS, COATS, STOCKINGS, SHOES, HEADGEAR, NAMELY HATS AND CAPS, AND GLOVES.” 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. 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).

 

The examining attorney attached evidence of 7,935 listings from telephone directories in the United States from the USFIND database. This evidence clearly meets the standards for presenting a prima facie case that the term is primarily merely a surname. In re Luis Caballero, S.A., 223 USPQ 355 (TTAB 1984); In re Wickuler Kupper-Brauerei KgaA, 221 USPQ 469 (TTAB 1983). The examining attorney’s search in a computerized database further evidences use of the term in a surname capacity. The examining attorney refers to the excerpted articles from the examining attorney’s search in a computerized database in which SEGURA appeared. See attachments. Finally, the examining attorney attaches the dictionary page where the term SEGURA was located, however, having only minor geographic significance. The fact that a term is shown to have some minor significance as a geographical term will not dissipate its primary significance as a surname.  TMEP §1211.01(a)(iii).  In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939, 1943 (TTAB 1993) (“The fact … that “HAMILTON” has been shown to have some minor significance as a geographical term does not dissipate its primary significance as a surname.”); In re Picone, 221 USPQ 93, 95 (TTAB 1984). See attached. As noted above, the test of whether a name is primarily merely a surname is its primary significance to the purchasing public. See, e.g., Ex parte Rivera Watch Corp., 106 USPQ 145, 145 (Comm’r Pats. 1955); TMEP section 1211. There is no evidence of record that, in the United States, the overall primary significance of the term SEGURA is anything other than a surname.

 

The applicant argues that the term SEGURA is a rare surname. A rare surname may be unregistrable under Trademark Act §2(e)(4), 15 U.S.C. §1052(e)(4), if its primary significance to purchasers is that of a surname.  See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) (DARTY); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990) (REBO); TMEP §1211.01(a)(v).  There is no minimum number of telephone directory listings needed to prove that a mark is primarily merely a surname.  TMEP §1211.02(b)(i).

 

For the foregoing reasons, the refusal under Trademark Act Section 2(e)(4) is maintained and made FINAL.

 

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed.  37 C.F.R. §2.47(c); TMEP §815.02, 816.02 and 1102.03.  When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

 

 

General Information

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

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

 

 

 

Asmat Khan

Trademark Attorney

LO 114

(571) 272-9453

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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