UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/637113
APPLICANT: AWI Licensing Company
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ARMSTRONG
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/637113
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
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).
Please see the attached evidence from 411.com, establishing the surname significance of the surname Armstrong. This evidence shows the proposed mark appearing over 300 times as a surname in a nationwide telephone directory of names.
The following five factors are used to determine whether a mark is primarily merely 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.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
The record indicates that applicant has used its mark for a long time; therefore, applicant may seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f), based on acquired distinctiveness. To amend the application to Section 2(f) based on five years use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:
The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.
Applicant must verify this statement with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(b); TMEP §1212.05(d).
Applicant may seek Principal Register registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by claiming acquired distinctiveness through ownership of U.S. Registration 0616397. To do so, applicant must submit the following statement, if accurate:
The mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration 0616397 on the Principal Register for the same mark for related goods or services.
37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.
The current wording used to describe the goods needs clarification because it does not include the material composition or intended use of the paste or adhesive. Applicant may adopt the following identification of goods, if accurate:
“Liquid and semi-liquid pastes and adhesives used for [Please indicate the uses for the goods and use the common commercial name in the description],” in International Class 1. TMEP §1402.01.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
If applicant is the owner of U.S. Registration Nos. 0616397 and 0523396, then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 0616397 and 0523396.
If applicant has questions about its application or needs assistance in responding to this Office Action, please telephone the assigned trademark examining attorney directly at the number below.
/Michael G. Lewis/
Examining Attorney
Law Office 111
United States Patent and Trademark Office
(571) 272-5495
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.