| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77106271 |
| LAW OFFICE ASSIGNED | LAW OFFICE 103 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
This is in response to the Office Action mailed June 6, 2007, in which the Trademark Examining Attorney has initially refused registration of Applicant’s Studebaker mark for “jewelry watches” in International Class 014 under Section 2(e)(4) of the Lanham Act, on the grounds that the mark is primarily merely a surname. The Trademark Examining Attorney also has required Applicant to state whether “Studebaker” represents a particular living individual. I. Amendment First, Applicant amends the pending application to include the statement that his “Studebaker” mark does not represent a particular living individual. II. Remarks Applicant next addresses the Trademark Examining Attorney’s refusal to register. It is well-established that in contemplating a surname refusal, an examining attorney must consider the impact a mark has upon the purchasing public to determine whether or not the primary significance of the mark when applied to a product is as a surname. Only if the primary significance of a word is as a surname should registration be refused under §2(e)(4) of the Lanham Act. In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832 (C.C.P.A. 1975). The question of whether a mark sought to be registered is primarily merely a surname within the meaning of the statute can be resolved only on a case-by-case basis, taking into account a number of various factual considerations. Factors cited by the Trademark Trial and Appeal Board for consideration in such an inquiry include the following: (i) the degree of surname rareness; (ii) whether anyone connected with the applicant has the surname; (iii) whether the term has any recognized meaning other than that of a surname; (iv) whether the word looks and sounds like a surname; and (v) whether the word is presented in use in a stylized form distinctive enough to create a separate nonsurname impression.[1]
In re Benthin Management GmbH, 37 U.S.P.Q.2d 1332, 1333 (T.T.A.B. 1995). The burden of proving that a trademark is primarily merely an surname rests squarely with the Patent and Trademark Office, and Applicant respectfully submits that the evidence presented in this case falls short of this burden. Kahan, 508 F.2d at 832. Furthermore, where there is a question as to whether or not a mark should be considered primarily merely a surname, doubt is resolved in favor of the Applicant. See Benthin, 37 U.S.P.Q.2d at 1334. Because Applicant is the owner of the mark Studebaker Clothing Company and S design for clothing, namely pants, jackets, vests and shirts, and U.S. Registration No. 2,905,562 therefor, Applicant addresses the third Benthin factor first. A. The Term Studebaker Has a Recognized Non-Surname Meaning. The Trademark Examiner must consider whether or not “Studebaker” has “any recognized meaning other than that of a surname.” Benthin, 37 U.S.P.Q.2d at 1333. Since October 2, 2002, Applicant has been engaged in the business of producing and selling clothing, namely pants, jackets, vests and shirts under the Studebaker mark, specifically under his Studebaker Clothing Company and S design mark. Further, since November 30, 2004, Applicant has been the owner of U. S. Registration No. 2,905,562 for his Studebaker Clothing Company and S design mark. As a result of Applicant’s continuous use of a Studebaker mark since October 2, 2002, his Studebaker mark has become known and accepted by the consuming public and in the trade, has become distinctive, and identifies clothing, namely pants, jackets, vests and shirts emanating from Applicant and symbolizes the goodwill of Applicant. The Trademark Rules of Practice and the Trademark Manual of Examination Procedures (“TMEP”) explicitly recognize that ownership of a previously registered mark may be used as prima facie evidence of distinctiveness. The Trademark Rules of Practice provide: In appropriate cases, ownership of one or more prior registrations on the Principal Register or under the Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness . . . .
37 C.F.R. §2.41(b). As evidence establishing acquired distinctiveness, the TMEP provides that the following is acceptable: “a claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application.” TMEP § 1212 (emphasis added). The dominant portion of Applicant’s registered mark is the word “Studebaker” and the S design, and Applicant presently seeks registration of the mark Studebaker. Applicant’s registered mark is for clothing and Applicant seeks registration of its mark Studebaker for jewelry watches. Thus, Applicant has demonstrated ownership of essentially the same mark for related goods which is evidence of acquired distinctiveness of Applicant’s Studebaker mark. Further, the Trademark Trial and Appeal Board (“T.T.A.B.”) has previously found that the distinctiveness of a registered mark comprised of an alleged surname would “carry over” to the same mark used to cover related goods. In re Owens-Illinois Glass Co., 143 U.S.P.Q. 431 (T.T.A.B. 1964). In Owens-Illinois, the T.T.A.B. overruled an Examiner’s denial of an application for registration of the mark “Libbey” for plastic tableware. Owens-Illinois argued that its existing registration of the “Libbey” mark for cut-glass articles was evidence “that the mark ha[d] become distinctive of applicant’s goods in commerce.” The Examiner refused registration, stating that ownership of the registered mark for cut-glass articles was by itself insufficient to establish the distinctiveness of the same mark to cover plastic tableware. Id. at 432. Owens-Illinois appealed and the T.T.A.B. reversed. In reversing the Examiner’s refusal, the Board cited § 2.41(b) and examined the relationship between cut-glass articles and plastic tableware. The Board noted that “[w]hile [the examiner] conceded that the identification of goods in applicant’s prior issued registration, i.e., cut-glass articles, is broad enough to comprehend cut-glass articles of tableware . . . the examiner has [now] taken the position that cut-glass tableware and plastic tableware are such distinctly different products that ‘secondary meaning of a mark applied to the former goods could not carry over to the latter goods.’” The Board disagreed with this reasoning, explaining that cut-glass and plastic articles “are customarily sold in the same retail outlets, and purchasers of one kind of tableware might well be prospective purchasers of the other.” Without further examination, the Board concluded that consumers would likely ascribe a common origin to cut-glass tableware and plastic tableware sold under the same mark, and that “any distinctiveness that applicant’s mark “Libbey” might possess as applied to cut-glass articles would more than likely carry over to its plastic tableware.” The same result should obtain here. As was the case with the goods in Owens-Illinois, Applicant’s clothing articles and jewelry watches would customarily be sold in the same retail outlets and it is reasonable to expect that the goods would share purchasers, thus aiding the transfer of distinctiveness between the marks. Because of such transfer, the purchasing public is likely to ascribe a common origin to Applicant’s goods identified by his Studebaker marks. Moreover, there are eight registrations, one published application, and one passed application for Studebaker and marks incorporating the word Studebaker. None of such registrations issued under section 2(f) of the Act. Further, neither application was passed to publication under section 2(f). See trademark.com search report attached as “Exhibit A.” Consequently, the Patent and Trademark Office has recognized that Studebaker has a non-surname meaning. B. No One Connected to Applicant Has the Studebaker Surname. The second prong of the Benthin analysis requires a determination of whether any person connected to the Applicant, or the Applicant himself, has the surname Studebaker. Benthin, 37 U.S.P.Q.2d at 1333. Applicant is not a Studebaker and there are no known persons connected to Applicant who have the surname Studebaker. Therefore, this factor weighs in favor of Applicant. C. Studebaker Is a Rare Surname. Although there is no benchmark number to determine whether a surname should be considered rare or common, the evidence relied upon by the Trademark Examining Attorney herein shows that Studebaker is a rare and uncommon surname. In considering the prevalence of the use of Studebaker as a surname in the United States, the Trademark Examining Attorney cites to 29 Studebaker surnames from the Switchboard.com database, a reference to Clement Studebaker on Dictionary.com, and a LexisNexis search which revealed only eleven articles written by a person with the surname Studebaker and only eight articles about an individual or family with the surname Studebaker. However, this evidence does not show that the “primary significance” of Studebaker to the purchasing public is as a surname. In reviewing the Switchboard.com database results, it is clear that there are as many as 5 duplicate entries (17% of the entries cited). There are three “A. Studebaker” listings for the number “(937) 678-1386” with the same or very similar addresses. Similarly, there are two “A. Studebaker” listings for “(818) 883- 8468” and “(408) 729-8386” respectively. Finally, there are two “Winniefred Studebaker” listings in Gig Habor, Washington, at “(253) 857-3662.” Considering that only 24 (29-5=24) entries were found in the Switchboard.com database directory out of a potential database of hundreds of millions of names and addresses, the directory supports the conclusion that the use of Studebaker as a surname is rare. Furthermore, the 2007 Greater Atlanta Residential telephone directory does not contain even a single listing for a person with the surname Studebaker. See attached “Exhibit B.” A similar result follows from a review of the Lexis Nexis search results. The Trademark Examining Attorney searched the “U.S. Newspapers and Wires [Aggregate News Sources]” database [from the 1980s and 1990s - present] for bylines of individuals named Studebaker and articles including the word Studebaker but not referring to an auto or a car. From the millions of articles published during the approximate past two decades, the Trademark Examining Attorney found only ten Studebaker authors. Similarly, from the same millions of articles published during the approximate past two decades, the Trademark Examining Attorney found only eight mentions of Studebaker when not referring to an auto or a car. The import of the data submitted by the Trademark Examining Attorney is that although the word Studebaker may be a surname, it is not primarily merely a surname. As the Commissioner of Patents has held: When it [mark] is used in trade it must have some impact or impression which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname. “Reeves,” “Higgins,” and “Wayne” are thus primarily merely surnames. If the mark has well known meanings as a word in the language and the purchasing public, upon seeing it on the goods, may not attribute surname significance to it, it is not primarily merely a surname. “King,” “Cotton” and “Boatman” fall in this category.
Ex parte Rivera Watch Corp., 106 U.S.P.Q. 145 (Comm’r Pat. 1955)
D. The Mark Does Not Look and Sound Like a Surname. The fourth Benthin factor is whether or not the mark has the “structure and pronunciation of a surname, or stated somewhat differently, the look and sound of a surname.” This inquiry is highly subjective in nature. Therefore, the fact that the Trademark Examining Attorney had to restrict his Lexis Nexis search for Studebaker hits in news stories to hits not referring to autos and cars shows that the consuming public does not find that Studebaker has the look and sound of a surname. Unlike the names “Jones” or “Smith,” the word Studebaker does not immediately invoke thoughts of a surname. II. Conclusion
Because Applicant's Mark has become distinctive and is not primarily merely a surname under Benthin, it is therefore eligible for registration on the Principal Register. Therefore, Applicant’s application should be passed to publication and his Studebaker mark registered on the Principal Register of the United States Patent and Trademark Office. [1] The fifth factor regarding stylization does not apply in this instance, as the mark in the STUDEBAKER application is displayed in standard characters. |
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_6488163230-134059084_._Studebaker_ROA_Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (23 pages) |
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| ORIGINAL PDF FILE | evi_6488163230-134059084_._Studebaker_ROA_Exhibit_B.pdf |
| CONVERTED PDF FILE(S) (3 pages) |
\\TICRS2\EXPORT14\771\062\77106271\xml1\ROA0025.JPG |
| \\TICRS2\EXPORT14\771\062\77106271\xml1\ROA0026.JPG | |
| \\TICRS2\EXPORT14\771\062\77106271\xml1\ROA0027.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A - trademark.com search report; Exhibit B - Cover page and pertinent page from the 2007 Greater Atlanta Residential telphone directory |
| ADDITIONAL STATEMENTS SECTION | |
| PRIOR REGISTRATION(S) | "Applicant claims ownership of U.S. Registration Number(s) 2905562." |
| NAME(S), PORTRAITS(S), SIGNATURE(S) OF INDIVIDUAL(S) | "The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual." |
| CORRESPONDENCE SECTION | |
| NAME | J. Rodgers Lunsford III |
| FIRM NAME | Smith, Gambrell & Russell, LLP |
| INTERNAL ADDRESS | Suite 3100, Promenade II |
| STREET | 1230 Peachtree Street, N.E. |
| CITY | Atlanta |
| STATE | Georgia |
| ZIP/POSTAL CODE | 30309 |
| COUNTRY | United States |
| PHONE | (404) 815-3628 |
| FAX | (404) 685-6928 |
| rlunsford@sgrlaw.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /J. Rodgers Lunsford III/ |
| SIGNATORY'S NAME | J. Rodgers Lunsford III |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 12/06/2007 |
| RESPONSE SIGNATURE | /J. Rodgers Lunsford III/ |
| SIGNATORY'S NAME | J. Rodgers Lunsford III |
| SIGNATORY'S POSITION | Attorney for Applicant |
| DATE SIGNED | 12/06/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Dec 06 14:52:37 EST 2007 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0071206145237877348-77106 271-4102f51728b99c3357add a2b2d2e0e95d-N/A-N/A-2007 1206134059084306 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
This is in response to the Office Action mailed June 6, 2007, in which the Trademark Examining Attorney has initially refused registration of Applicant’s Studebaker mark for “jewelry watches” in International Class 014 under Section 2(e)(4) of the Lanham Act, on the grounds that the mark is primarily merely a surname. The Trademark Examining Attorney also has required Applicant to state whether “Studebaker” represents a particular living individual.
I. Amendment
First, Applicant amends the pending application to include the statement that his “Studebaker” mark does not represent a particular living individual.
II. Remarks
Applicant next addresses the Trademark Examining Attorney’s refusal to register. It is well-established that in contemplating a surname refusal, an examining attorney must consider the impact a mark has upon the purchasing public to determine whether or not the primary significance of the mark when applied to a product is as a surname. Only if the primary significance of a word is as a surname should registration be refused under §2(e)(4) of the Lanham Act. In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832 (C.C.P.A. 1975).
The question of whether a mark sought to be registered is primarily merely a surname within the meaning of the statute can be resolved only on a case-by-case basis, taking into account a number of various factual considerations. Factors cited by the Trademark Trial and Appeal Board for consideration in such an inquiry include the following:
(i) the degree of surname rareness;
(ii) whether anyone connected with the applicant has the surname;
(iii) whether the term has any recognized meaning other than that of a surname;
(iv) whether the word looks and sounds like a surname; and
(v) whether the word is presented in use in a stylized form distinctive enough to create a separate nonsurname impression.[1]
In re Benthin Management GmbH, 37 U.S.P.Q.2d 1332, 1333 (T.T.A.B. 1995). The burden of proving that a trademark is primarily merely an surname rests squarely with the Patent and Trademark Office, and Applicant respectfully submits that the evidence presented in this case falls short of this burden. Kahan, 508 F.2d at 832. Furthermore, where there is a question as to whether or not a mark should be considered primarily merely a surname, doubt is resolved in favor of the Applicant. See Benthin, 37 U.S.P.Q.2d at 1334. Because Applicant is the owner of the mark Studebaker Clothing Company and S design for clothing, namely pants, jackets, vests and shirts, and U.S. Registration No. 2,905,562 therefor, Applicant addresses the third Benthin factor first.
A. The Term Studebaker Has a Recognized Non-Surname Meaning.
The Trademark Examiner must consider whether or not “Studebaker” has “any recognized meaning other than that of a surname.” Benthin, 37 U.S.P.Q.2d at 1333. Since October 2, 2002, Applicant has been engaged in the business of producing and selling clothing, namely pants, jackets, vests and shirts under the Studebaker mark, specifically under his Studebaker Clothing Company and S design mark. Further, since November 30, 2004, Applicant has been the owner of U. S. Registration No. 2,905,562 for his Studebaker Clothing Company and S design mark. As a result of Applicant’s continuous use of a Studebaker mark since October 2, 2002, his Studebaker mark has become known and accepted by the consuming public and in the trade, has become distinctive, and identifies clothing, namely pants, jackets, vests and shirts emanating from Applicant and symbolizes the goodwill of Applicant.
The Trademark Rules of Practice and the Trademark Manual of Examination Procedures (“TMEP”) explicitly recognize that ownership of a previously registered mark may be used as prima facie evidence of distinctiveness. The Trademark Rules of Practice provide:
In appropriate cases, ownership of one or more prior registrations on the Principal Register or under the Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness . . . .
37 C.F.R. §2.41(b). As evidence establishing acquired distinctiveness, the TMEP provides that the following is acceptable: “a claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application.” TMEP § 1212 (emphasis added). The dominant portion of Applicant’s registered mark is the word “Studebaker” and the S design, and Applicant presently seeks registration of the mark Studebaker. Applicant’s registered mark is for clothing and Applicant seeks registration of its mark Studebaker for jewelry watches. Thus, Applicant has demonstrated ownership of essentially the same mark for related goods which is evidence of acquired distinctiveness of Applicant’s Studebaker mark.
Further, the Trademark Trial and Appeal Board (“T.T.A.B.”) has previously found that the distinctiveness of a registered mark comprised of an alleged surname would “carry over” to the same mark used to cover related goods. In re Owens-Illinois Glass Co., 143 U.S.P.Q. 431 (T.T.A.B. 1964). In Owens-Illinois, the T.T.A.B. overruled an Examiner’s denial of an application for registration of the mark “Libbey” for plastic tableware. Owens-Illinois argued that its existing registration of the “Libbey” mark for cut-glass articles was evidence “that the mark ha[d] become distinctive of applicant’s goods in commerce.” The Examiner refused registration, stating that ownership of the registered mark for cut-glass articles was by itself insufficient to establish the distinctiveness of the same mark to cover plastic tableware. Id. at 432.
Owens-Illinois appealed and the T.T.A.B. reversed. In reversing the Examiner’s refusal, the Board cited § 2.41(b) and examined the relationship between cut-glass articles and plastic tableware. The Board noted that “[w]hile [the examiner] conceded that the identification of goods in applicant’s prior issued registration, i.e., cut-glass articles, is broad enough to comprehend cut-glass articles of tableware . . . the examiner has [now] taken the position that cut-glass tableware and plastic tableware are such distinctly different products that ‘secondary meaning of a mark applied to the former goods could not carry over to the latter goods.’” The Board disagreed with this reasoning, explaining that cut-glass and plastic articles “are customarily sold in the same retail outlets, and purchasers of one kind of tableware might well be prospective purchasers of the other.” Without further examination, the Board concluded that consumers would likely ascribe a common origin to cut-glass tableware and plastic tableware sold under the same mark, and that “any distinctiveness that applicant’s mark “Libbey” might possess as applied to cut-glass articles would more than likely carry over to its plastic tableware.”
The same result should obtain here. As was the case with the goods in Owens-Illinois, Applicant’s clothing articles and jewelry watches would customarily be sold in the same retail outlets and it is reasonable to expect that the goods would share purchasers, thus aiding the transfer of distinctiveness between the marks. Because of such transfer, the purchasing public is likely to ascribe a common origin to Applicant’s goods identified by his Studebaker marks.
Moreover, there are eight registrations, one published application, and one passed application for Studebaker and marks incorporating the word Studebaker. None of such registrations issued under section 2(f) of the Act. Further, neither application was passed to publication under section 2(f). See trademark.com search report attached as “Exhibit A.” Consequently, the Patent and Trademark Office has recognized that Studebaker has a non-surname meaning.
B. No One Connected to Applicant Has the Studebaker Surname.
The second prong of the Benthin analysis requires a determination of whether any person connected to the Applicant, or the Applicant himself, has the surname Studebaker. Benthin, 37 U.S.P.Q.2d at 1333. Applicant is not a Studebaker and there are no known persons connected to Applicant who have the surname Studebaker. Therefore, this factor weighs in favor of Applicant.
C. Studebaker Is a Rare Surname.
Although there is no benchmark number to determine whether a surname should be considered rare or common, the evidence relied upon by the Trademark Examining Attorney herein shows that Studebaker is a rare and uncommon surname. In considering the prevalence of the use of Studebaker as a surname in the United States, the Trademark Examining Attorney cites to 29 Studebaker surnames from the Switchboard.com database, a reference to Clement Studebaker on Dictionary.com, and a LexisNexis search which revealed only eleven articles written by a person with the surname Studebaker and only eight articles about an individual or family with the surname Studebaker. However, this evidence does not show that the “primary significance” of Studebaker to the purchasing public is as a surname.
In reviewing the Switchboard.com database results, it is clear that there are as many as 5 duplicate entries (17% of the entries cited). There are three “A. Studebaker” listings for the number “(937) 678-1386” with the same or very similar addresses. Similarly, there are two “A. Studebaker” listings for “(818) 883- 8468” and “(408) 729-8386” respectively. Finally, there are two “Winniefred Studebaker” listings in Gig Habor, Washington, at “(253) 857-3662.” Considering that only 24 (29-5=24) entries were found in the Switchboard.com database directory out of a potential database of hundreds of millions of names and addresses, the directory supports the conclusion that the use of Studebaker as a surname is rare. Furthermore, the 2007 Greater Atlanta Residential telephone directory does not contain even a single listing for a person with the surname Studebaker. See attached “Exhibit B.”
A similar result follows from a review of the Lexis Nexis search results. The Trademark Examining Attorney searched the “U.S. Newspapers and Wires [Aggregate News Sources]” database [from the 1980s and 1990s - present] for bylines of individuals named Studebaker and articles including the word Studebaker but not referring to an auto or a car. From the millions of articles published during the approximate past two decades, the Trademark Examining Attorney found only ten Studebaker authors. Similarly, from the same millions of articles published during the approximate past two decades, the Trademark Examining Attorney found only eight mentions of Studebaker when not referring to an auto or a car.
The import of the data submitted by the Trademark Examining Attorney is that although the word Studebaker may be a surname, it is not primarily merely a surname. As the Commissioner of Patents has held:
When it [mark] is used in trade it must have some impact or impression which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname. “Reeves,” “Higgins,” and “Wayne” are thus primarily merely surnames. If the mark has well known meanings as a word in the language and the purchasing public, upon seeing it on the goods, may not attribute surname significance to it, it is not primarily merely a surname. “King,” “Cotton” and “Boatman” fall in this category.
Ex parte Rivera Watch Corp., 106 U.S.P.Q. 145 (Comm’r Pat. 1955)
D. The Mark Does Not Look and Sound Like a Surname.
The fourth Benthin factor is whether or not the mark has the “structure and pronunciation of a surname, or stated somewhat differently, the look and sound of a surname.” This inquiry is highly subjective in nature. Therefore, the fact that the Trademark Examining Attorney had to restrict his Lexis Nexis search for Studebaker hits in news stories to hits not referring to autos and cars shows that the consuming public does not find that Studebaker has the look and sound of a surname. Unlike the names “Jones” or “Smith,” the word Studebaker does not immediately invoke thoughts of a surname.
II. Conclusion
Because Applicant's Mark has become distinctive and is not primarily merely a surname under Benthin, it is therefore eligible for registration on the Principal Register. Therefore, Applicant’s application should be passed to publication and his Studebaker mark registered on the Principal Register of the United States Patent and Trademark Office.
[1] The fifth factor regarding stylization does not apply in this instance, as the mark in the STUDEBAKER application is displayed in standard characters.
