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  76/634890

 

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

 

Refusal to Register – Mark Primarily Merely a Surname

Registration is 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).

 

The following five factors are used to determine whether a mark is primarily merely a surname:

 

• the rareness of the surname;
• whether anyone connected with the applicant has the mark as his or her surname;
• whether the term has any recognized meaning other than as a surname;
• whether the mark has the structure and pronunciation of a surname; and
• whether the mark is sufficiently stylized to remove its primary significance from that of a surname.

 

TMEP §1211.01.  See In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995); In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994) and cases cited therein.

 

The fact that a term looks and sounds like a surname may contribute to a finding that the primary significance of the term is that of a surname.  In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989); In re Petrin Corp., 231 USPQ 902 (TTAB 1986); TMEP §1211.01(a)(vi).

 

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).

 

The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).  In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984); TMEP §710.01(a).

 

Please see the attached evidence from the search engine www.google.com and http://people.yahoo.com/, establishing the surname significance of CAPACCI.  This evidence shows the proposed mark appearing numerous times as a surname and does not appear to have any other recognized meaning other than as a surname.  In addition, the mark has the structure and pronunciation of a surname.

 

Potential Future Amendment to Supplemental Register

Although the examining attorney has refused registration on the Principal Register, applicant may amend the application to seek registration on the Supplemental Register.   While Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

 

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act, 15 U.S.C. §1052(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

NOTE:  A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d) and 2.75(b); TMEP §1102.03.  When a Section 1(b) application is amended to the Supplemental Register, the effective filing date of the application is the date of filing of the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 1102.03.

 

Opportunity to 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.

 

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

 

General Inquiry on Significance

Applicant must specify whether CAPACCI has any significance in the relevant trade or industry, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

 

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

 

 

/Tricia Sonneborn/

Trademark Examining Attorney

Law Office 110

phone (571) 272-9225

fax (571) 273-9110

 

 

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.