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. 

 

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  77/066116

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  Telephone responses will not incur an additional fee.  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

 

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

 

2(e)(4) - Surname Refusal

 

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 Lycos People Search and Long Lost People, establishing the surname significance of the surname KELLER.  This evidence shows the proposed mark appearing 40,716 times as a surname in the Lycos People Search database and 274,413 times as a surname in the Long Lost People database.

 

The addition of an initial or initials to a surname does not diminish the surname significance of the term, and may, in fact, emphasize the primary surname significance of the term.  In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265 (C.C.P.A. 1953) (S. SEIDENBERG & CO’S.); In re Piquet, 5 USPQ2d 1367 (TTAB 1987) (N. PIQUET); Ex parte Sears, Roebuck & Co., 87 USPQ 400 (PO Ex. Ch. 1950) (J.C. HIGGINS).

 

Combining a surname with the generic name for the goods or services does not overcome a mark’s surname significance.  See In re Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939 (TTAB 1993) (HAMILTON PHARMACEUTICALS held primarily merely a surname for “pharmaceutical products”); In re Cazes, 21 USPQ2d 1796 (TTAB 1991) (BRASSERIE LIPP held primarily merely a surname when used in connection with “restaurant services”); In re Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991) (WOOLLEY’S PETITE SUITES held primarily merely a surname for hotel and motel services).

 

Hence, the addition of the wording “& ASSOCIATES, INC.” does not alter the surname significance of the mark because it identifies the generic name for the goods. The trademark examining attorney has attached registrations that show that the term “ASSOCIATES” has been held to be generic for goods similar to applicant’s because it merely identifies applicant’s entity type. The wording “INC.” is also generic wording used to indicate applicant’s entity type.

 

A mark deemed primarily merely a surname may be registered on the Principal Register under Section 2(f) (“acquired distinctiveness”) by satisfying one of the following:

 

(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 the application and for the same or related goods and/or services.  37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.

 

(2)     Submitting the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “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 this statement.”  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.  This evidence may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, and any other evidence that establishes the distinctiveness of the mark as an indicator of source.  See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp. of Am., 201 USPQ 957 (TTAB 1979). 

 

15 U.S.C. §1052(f); TMEP §§1211 and 1212.02(a).

 

If applicant amends the application to seek registration on the Principal Register under Section 2(f), applicant must disclaim “& ASSOCIATES INC.,” because such wording appears to be generic in the context of applicant’s goods.  In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP §1213.03(b).

 

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.

 

Response Guidelines

 

The response should address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.).  TMEP §§712 et seq.

 

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.

 

 

/Seth A. Rappaport/

Seth A. Rappaport

Trademark Examining Attorney

Law Office 103

Phone: (571) 270-1508

Fax: (571) 270-2508

 

 

 

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.