UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/667676
APPLICANT: Textron Inc.
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CORRESPONDENT ADDRESS: HARNESS, DICKEY & PIERCE, P.L.C. |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: JACOBSEN
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CORRESPONDENT’S REFERENCE/DOCKET NO: 3191J-200211
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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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 76/667676
The assigned examining attorney has reviewed the referenced application and determined the following.
Telephone Response Suggested
PLEASE NOTE: Applicant is encouraged to telephone the trademark examining attorney to resolve the issues raised below.
Search Results
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.
REFUSAL UNDER SECTION 2(e)(4) OF THE TRADEMARK ACT
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 Rhymezone.com, establishing the surname significance of the surname JACOBSEN.
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).
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).
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.
Applicant may amend the application to seek registration on the Principal Register pursuant to Trademark Act Section 2(f) if applicant has used its mark for a significant period of time in commerce that may be lawfully regulated by the United States Congress. In re Etablissments Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985). This use in commerce must be substantially exclusive and continuous for at least the five years prior to the date the amendment to Section 2(f) is requested. 15 U.S.C. §1052(f).
To amend the application to Section 2(f) based on five years use, applicant should provide information regarding the length of use of the mark in commerce and/or dates of use (see TMEP §1212.08), and include 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 a type of commerce that the U.S. Congress can regulate for at least the five years immediately before the date of this statement.
Applicant must verify this statement with an 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 not rely on use other than use in commerce that may be regulated by the United States Congress in establishing acquired distinctiveness. Use solely in a foreign country is not evidence of acquired distinctiveness in the United States. In re Rogers, 53 USPQ2d 1741 (TTAB 1999); TMEP §§1010 and 1212.08.
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. Registrations 0757242, 0839096, 1429849 and 1832608. To do so, applicant must submit the following statement, if accurate:
The mark has become distinctive of the goods as evidenced by ownership of U.S. Registrations 0757242, 0839096, 1429849 and 1832608 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.
Applicant may also amend the application to seek registration on the Principal Register pursuant to Trademark Act Section 2(f) if applicant has used its mark for a significant period of time in commerce that may be lawfully regulated by the United States Congress. In re Etablissments Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985). This use in commerce must be substantially exclusive and continuous for at least the five years prior to the date the amendment to Section 2(f) is requested. 15 U.S.C. §1052(f).
To amend the application to Section 2(f) based on five years use, applicant should provide information regarding the length of use of the mark in commerce and/or dates of use (see TMEP §1212.08), and include 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 a type of commerce that the U.S. Congress can regulate for at least the five years immediately before the date of this statement.
Applicant must verify this statement with an 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 not rely on use other than use in commerce that may be regulated by the United States Congress in establishing acquired distinctiveness. Use solely in a foreign country is not evidence of acquired distinctiveness in the United States. In re Rogers, 53 USPQ2d 1741 (TTAB 1999); TMEP §§1010 and 1212.08.
Partial Requirement :Identification of Goods
THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED BELOW.
The wording “utility vehicles” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of each item of the goods. If there is no common commercial name for the product, the applicant must describe the product in detail and its intended uses. TMEP §1402.01. The applicant may amend the wording to “utility vehicles, namely, land vehicles” if accurate.
For assistance with identifying 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 and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
PLEASE NOTE: An assertion of acquired distinctiveness based on prior registrations for the same mark may be entered via Examiner’s Amendment. The applicant is encouraged to telephone the examining attorney, instead of submitting a written response, to expedite the application.
John Kelly /jmck/
Trademark Attorney
Law Office 117
571.272.9412
Fax: 571.273-9117 (official responses only)
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.