UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/625676
APPLICANT: Toto U.S.A., Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: DALTON
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CORRESPONDENT’S REFERENCE/DOCKET NO: 83847-313942
CORRESPONDENT EMAIL ADDRESS: |
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 76/625676
This letter responds to the applicant’s communication and is a final action on the merits.
2(e)(4) – Final Surname Refusal
The refusal to register the mark under Section 2(e)(4) of the Trademark Act is continued and made FINAL.
Applicant has applied to register DALTON for “plumbing fixtures, namely, toilets, bidets, bathtubs, showers, sinks, faucets”. Registration was initially refused because the proposed mark is primarily merely a surname. Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §§1211 et seq. The primary significance of the mark to the purchasing public determines whether a term is primarily merely a surname. In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975).
In support of registration, applicant argues that the evidence of record cited by Examining Attorney are “de minimis and fail to establish the surname significance of the mark”. However, it is well settled that there is no rule as to the kind or amount of evidence necessary to make out a prima facie showing that a term is primarily merely a surname. This question must be resolved on a case-by-case basis. See, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., Ltd., 230 USPQ 79 (TTAB 1986). The entire record is examined to determine the surname significance of a term. The following are examples of evidence that is generally considered to be relevant: telephone directory listings; excerpted articles from computerized research databases; evidence in the record that the term is a surname; the manner of use on specimens; dictionary definitions of the term and evidence from dictionaries showing no definition of the term. TMEP §1211.02(a).
In this case, the examining attorney attaches third party registrations for the term DALTON on the Supplemental Register on under Trademark Act Section 2(f) based on acquired distinctiveness. The fact that these registrations appear on the Supplemental Register support the examining attorney’s position that the term DALTON is used primarily as a surname. The examining attorney also attaches http://lists.rootsweb.com/index/surname/m/mears.html obtained from the Internet on August 30, 2004 at 2:54 p.m. which indicates that MEARS is a surname.
The applicant argues that the mark conveys several different meanings; the primary one being “a term for an atomic mass unit”. The examining attorney finds the applicant’s argument unpersuasive. While “DALTON” does indeed appear in the dictionary, see Dictionary.com, accessed on December 12, 2005, the mark is clearly defined as a surname. Applicant also contends that use of "Dalton" as a surname is rare and minimal. However, the issue of determining whether a surname is common or rare is not determined solely by comparing the number of listings of the surname in a computerized database with the total number of listings in that database, because even the most common surname would represent only a small fraction of such a database. Rather, if a surname appears routinely in news reports, articles and other media as to be broadly exposed to the general public, then such surname is not rare and would be perceived by the public as primarily merely a surname. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004). Accordingly, the examining attorney attaches excerpted articles from the examining attorney’s search in the NEXIS® computerized database in which the term DALTON was searched.
As encountered by consumers in the phone book listings and as used in the excerpted articles, consumers when encountering the term would encounter the term as a surname.
For the forgoing reasons, the refusal to register the mark under Section 2(e)(4) of the Trademark Act is continued and made FINAL.
Again, applicant may register a surname as a trademark under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by establishing acquired distinctiveness in any one of the following three ways:
(1) submitting a claim of ownership of one or more prior registrations on the Principal Register for a mark that is the same as the mark in this application for the same or related goods and/or services. 37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.
(2) submitting a statement that the mark has become distinctive of applicant's goods and/or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years preceding the date of the statement. Applicant must verify this statement with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(b); TMEP §§1212.05 et seq.
(3) submitting actual evidence of acquired distinctiveness. 37 C.F.R. §2.41(a); TMEP §§1212.06 et seq.
TMEP §§1211 and 1212.02(a).
Alternatively, 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.
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 matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/kbp/
Kimberly Boulware Perry
Attorney - Law Office 112
phone: 571-272-9208; fax: 571-273-9112
direct email: kimberly.perry@uspto.gov
EXCERPTED NEXIS® ARTICLES
Time Inc.
All Rights Reserved
People
December 12, 2005
SECTION: CRIME WATCH; Pg. 110 Vol. 64 No. 24
LENGTH: 430 words
HEADLINE: Crime Watch
BODY:
... stores for long (four bestsellers this year), but there's one his lawyer
is suing to keep off shelves altogether. Matt Dalton, briefly a member of
Peterson's defense team in preparation for his 2004 trial, has written Presumed
Guilty: What the Jury ...
The Atlanta Journal-Constitution
The Atlanta Journal-Constitution
December 8, 2005 Thursday
Home Edition
SECTION: CLAYTON / HENRY; Pg. 7JI
LENGTH: 790 words
HEADLINE: PROUD MOMENTS
BYLINE: MICHELLE WILSON
BODY:
... Stockbridge, 2:24:32; Janice Taylor, McDonough, 2:26:50; Charlene
Jenkins, Riverdale, 2:51:25; Cathy Kennard, McDonough, 2:07:06; Valerie
Dalton, Jonesboro, 2:11:43; Marie Campbell, Jonesboro, 2:19:40; Duwane Morgan,
Jonesboro, 2:28:51; Melody Rhoads, Locust Grove, 2:46:09; ...
The Atlanta Journal-Constitution
The Atlanta Journal-Constitution
December 8, 2005 Thursday
Home Edition
SECTION: DEKALB; Pg. 1JB
LENGTH: 946 words
HEADLINE: Advanced steps;
Modern dance troupe keeps its artistic sense, energies in motion
BYLINE: BILL BANKS
GRAPHIC:
... co-founder Sue Schroeder (center) is flanked by troupe members (from
left) Patton White, Juana Farfan, Blake Dalton, Jhon Stronks, Kimberly Kleiber
and Kate Huggins Hinkel. "We never, as an organization, have anything set in
stone," White ...
Saint Paul Pioneer Press
All Rights Reserved
Saint Paul Pioneer Press (Minnesota)
December 8, 2005 Thursday
SECTION: LIFE; Pg. 10G
LENGTH: 2461 words
HEADLINE: Acadia Cafe: 1931 Nicollet Ave. S., Mpls., 612-874-8702. Mary Mack...
BODY:
... Ave., Mpls., 612-623-4545. John Lennon tribute with Nick Leet, Charlie
Dush, Brian McGuire, Jenny Dalton, 8 p.m. today; $4. Superman Curl, 9 p.m.
Friday; $5. All the Pretty Horses
The State
All Rights Reserved
The State (Columbia, South Carolina)
December 8, 2005 Thursday
SECTION: A; Pg. 0
LENGTH: 958 words
HEADLINE: Schools
BODY:
... Mary Hall; Columbia High: Carolyn Masek; Crayton Middle: Sylvia O'Boyle;
Dreher High: Kitty Henderson and Mary Dalton; H.B. Rhame Elementary: Susan
Adams; Hopkins Elementary: Jessie Berry; Hopkins Middle: Jean Masdonati; Hyatt
Park ...
The Times-Picayune Publishing Company
Times-Picayune (New Orleans)
December 8, 2005 Thursday
SECTION: SLIDELL PICAYUNE; Pg. 13
LENGTH: 196 words
HEADLINE: SLU
BODY:
... ensemble members are: Mandeville, Maggie Probst; Tickfaw, Erica
Brumfield; Kentwood, Larry Taplin; Independence, Ronnisha Junior, Tenisha
Dalton and Floyd Holden Jr.
The Washington Post
The Washington Post
December 8, 2005 Thursday
Final Edition
SECTION: Southern Maryland Extra; T08
LENGTH: 2412 words
HEADLINE: What's Happening
BODY:
... baritone Michael Peerless, organist Angela Garvey, recorder player George
Miller, flutist Carol Gordon, pianists Judy Dalton and Eileen Peerless, and
the Christ Church Choir. Christ Church, 112 E. Charles St., La Plata. Free, with
donations ...
Little Rock Newspapers, Inc.
Arkansas Democrat-Gazette (Little Rock)
December 7, 2005 Wednesday
SECTION: NORTHWEST ARKANSAS
LENGTH: 1855 words
HEADLINE: Northwest Arkansas deaths
BODY:
... direction. Graveside service 2 p.m., Galena Cemetery, Galena, Mo. Son
William, sisters Jerry Maddox and Nancy Dalton, brother Chris Epps survive
him.
Paddock Publications, Inc.
Chicago Daily Herald
December 7, 2005 Wednesday
Lake Edition
SECTION: SPORTS; Pg. 12
LENGTH: 380 words
HEADLINE: Warren's depth shows again in win over LZ
BYLINE: Rusty Silber, Daily Herald Correspondent
BODY:
... held a 4-3 lead two minutes into the game, at which point their defensive
pressure took over.
Jordan Dalton made a couple of steals and it jump-started the offense to a
15-5 run.
Dayton Newspapers, Inc.
Dayton Daily News (Ohio)
December 7, 2005 Wednesday
SECTION: SPORTS; Pg. C4
LENGTH: 424 words
HEADLINE: Firebirds wash away bad taste by clipping Carroll;
Romine's foul woes pose no problems for Fairmont defense
BYLINE: By Eric Frantz For The Dayton Daily News
BODY:
... held a 22-point advantage with less than two minutes to go.
Juniors Stephanie Bamberger (12 points) and Abbie Dalton (10) led Fairmont,
which rebounded from a 5-for-59 shooting performance against the Elks with a
19-of-38 ...
The Deseret News Publishing Co.
Deseret Morning News (Salt Lake City)
December 7, 2005 Wednesday
LENGTH: 318 words
HEADLINE: 2005 All-State Football: 2A first team
BODY:
... Taylor
DL/OL, Grand
6-3, 280, Sr.
39 unassisted tackles, 49 assisted tackles Tony Dalton
Derby Evening Telegraph
All Rights Reserved
Derby Evening Telegraph
December 7, 2005 Wednesday
SECTION: Pg. 66
LENGTH: 458 words
HEADLINE: Carberry's joker lands a win
BYLINE: Peter Green
BODY:
... feeder, he won with a 14lb 6oz total in the contest, which was staged at
Springwood Fisheries in Melbourne.
Graham Dalton was second with a 7lb 8oz 4drms net in the 19-peg match
The Kansas City Star
All Rights Reserved
The Kansas City Star
December 7, 2005 Wednesday
LENGTH: 514 words
HEADLINE: Overland park City Council
BYLINE: HENRY C. JACKSON, The Kansas City Star
BODY:
... actions:
Legacy of Greenery Committee: Approved the reappointments of Charlene
Conrad, Robert Whitman, Janie Thacker, Donna Thellman, Robert Dalton and Linda
Patterson to the city's Legacy of Greenery Committee
Richmond Newspapers, Inc.
Richmond Times Dispatch (Virginia)
December 7, 2005 Wednesday
CITY EDITION
SECTION: AREA/STATE; Pg. B-4
LENGTH: 609 words
HEADLINE: KAINE, BOLLING PUT ON A HAPPY FACE -- FOR NOW
BYLINE: By Jeff E. Schapiro Times-Dispatch Staff Writer Contact staff writer
Jeff E. Schapiro at or (804) 649-6814.
BODY:
... not plan to open Cabinet sessions to Bolling, nor does Bolling expect to
be invited.
Under the late Republican Gov. John N. Dalton, representatives of the
lieutenant governor's office, then occupied by Democrat Charles S. Robb,
occasionally attended Cabinet meetings
The Hearst Corporation
The Times Union (Albany, New York)
December 7, 2005 Wednesday
3 EDITION
SECTION: ARTS & ENTERTAINMENT; Pg. D5
LENGTH: 515 words
HEADLINE: `King Island' lifts spirit and imagination
BYLINE: By MICHAEL ECK Special to the Times Union
BODY:
... guest artists and company members.
Standouts include Shannon Johnson with "The Gift of Trouble," Clint Johnson
with "Song of the Oomiak" and Rob Dalton - whose singing as always is a joy to
hear - with "It's Love."
HOW TO RESPOND TO THIS OFFICE ACTION:
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.