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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/648118

 

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

 

No Similar Marks

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.

 

Applicant, however, should note the following refusal.

 

 

 

Mark is Primarily Merely A Surname

The applicant applied to register the mark FARROW for “UNPROCESSED ARTIFICIAL RESIN, SAND, SILICONES AND SILICATES; OLIVINE”; “CLEANING, POLISHING, SCOURING AND ABRASIVE PREPARATIONS; SAND PAPER AND SAND CLOTH; PAINT AND SUBSTANCE STRIPPERS AND REMOVERS” and “MACHINES AND MACHINE TOOLS FOR USE IN CLEANING, CUTTING, STRIPPING, POLISHING, SCOURING, ABRADING AND SANDBLASTING OF MATERIALS; MOTORS AND INTERNAL COMBUSTION ENGINES FOR INDUSTRIAL USE; MACHINE COUPLING AND TRANSMISSION PARTS; INDUSTRIAL CLEANING MACHINES; COMPRESSORS; MACHINES AND PARTS THEREOF FOR USE WITH PRESSURIZED LIQUIDS FOR WASHING AND CLEANING; MACHINES AND PARTS THEREOF FOR STRIPPING AND CLEANING SURFACES THAT UTILIZE HEAT AND STEAM; SAND BLASTING MACHINES AND PARTS THEREOF; AND PARTS FOR ALL THE FOREGOING MACHINES.” 

 

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.

 

Please see the attached evidence from Phonebook.com and applicant’s own website, establishing the surname significance of the surname Farrow.  This evidence shows the proposed mark appearing 161 times as a surname in a nationwide telephone directory of names.  In addition, someone with the surname Farrow is associated with the applicant.

 

Accordingly, because applicant’s mark is primarily merely a surname, registration is refused under Section 2(e)(4) of the Trademark Act.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusals to register, then applicant must also respond to the following requirements.

 

Identification and Classification of Goods

The applicant’s identification of goods is “UNPROCESSED ARTIFICIAL RESIN, SAND, SILICONES AND SILICATES; OLIVINE”; “CLEANING, POLISHING, SCOURING AND ABRASIVE PREPARATIONS; SAND PAPER AND SAND CLOTH; PAINT AND SUBSTANCE STRIPPERS AND REMOVERS”; and “MACHINES AND MACHINE TOOLS FOR USE IN CLEANING, CUTTING, STRIPPING, POLISHING, SCOURING, ABRADING AND SANDBLASTING OF MATERIALS; MOTORS AND INTERNAL COMBUSTION ENGINES FOR INDUSTRIAL USE; MACHINE COUPLING AND TRANSMISSION PARTS; INDUSTRIAL CLEANING MACHINES; COMPRESSORS; MACHINES AND PARTS THEREOF FOR USE WITH PRESSURIZED LIQUIDS FOR WASHING AND CLEANING; MACHINES AND PARTS THEREOF FOR STRIPPING AND CLEANING SURFACES THAT UTILIZE HEAT AND STEAM; SAND BLASTING MACHINES AND PARTS THEREOF; AND PARTS FOR ALL THE FOREGOING MACHINES.”

 

The identification of goods is unacceptable as indefinite.  Applicant must clarify the identification of goods by specifying the use for the compressors; the use, industry or form of the unprocessed artificial resin; the type of silicones and silicates; and the nature of and use for the olivine.  TMEP §1402.01.  Applicant may adopt the following identification of goods, if accurate.  Please note the correct classification of the goods. 

 

“Unprocessed artificial resin FOR____________ {indicate specific use or industry}; silicones and silicates, namely,__________{specify the types of silicones and silicates}; CHEMICALS FOR USE IN INDUSTRY, NAMELY, olivine” in International Class 001.

 

“Cleaning, polishing, scouring and abrasive preparations; sand paper and sand cloth; paint and substance strippers and removers” in International Class 003.

 

“Machines and machine tools for use in cleaning, cutting, stripping, polishing, scouring, abrading and sandblasting of materials; motors and internal combustion engines for industrial use; machine coupling and transmission parts; industrial cleaning machines; compressors FOR MACHINES; machines and parts thereof for use with pressurized liquids for washing and cleaning; machines and parts thereof for stripping and cleaning surfaces that utilize heat and steam; sand blasting machines and parts thereof; and parts for all the foregoing machines” in International Class 007.

 

“Sand” in International Class 019.  TMEP §1402.01.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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.

 

Multiple Class Requirements

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Applicant has paid the filing fee for THREE Classes.

 

Prior Registration

If applicant is the owner of U.S. Registration No. 3066357, 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 No. 3066357.

 

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.

 

/Robert J. Struck/

Robert J. Struck

Trademark Examining Attorney

Law Office 109

Phone - (571) 272-1513

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.