| To: | John A. Seaton (rlunsford@sgrlaw.com) |
| Subject: | TRADEMARK APPLICATION NO. 77106288 - STUDEBAKER - 043639.004 |
| Sent: | 1/16/2008 6:32:22 PM |
| Sent As: | ECOM103@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/106288
MARK: STUDEBAKER
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: John A. Seaton
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 1/16/2008
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).
This letter responds to the applicant’s communication filed December 6, 2007. Applicant’s answer to the living individual inquiry has been accepted and entered. However, the refusal under Trademark Act Section 2(e)(4) is continued and maintained. In addition, the following issue has been raised.
Acquired Distinctiveness - DENIED
Applicant has claimed acquired distinctiveness for this intent to use application in an effort to obviate the previously issued and continued surname refusal under Trademark Act Section 2(e)(4). This application is for the standard character mark STUDEBAKER for wallets. Applicant claims the mark has acquired distinctiveness based on ownership of a prior registration for the stylized design mark S STUDEBAKER CLOTHING COMPANY for clothing goods.
The Trademark Trial and Appeal Board has set forth the requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:
The required showing is essentially twofold. First, applicant must establish, through the appropriate submission, the acquired distinctiveness of the same mark in connection with specified other goods and/or services in connection with which the mark is in use in commerce. All of the rules and legal precedent pertaining to such a showing in a use-based application are equally applicable in this context.... Second, applicant must establish, through submission of relevant evidence rather than mere conjecture, a sufficient relationship between the goods or services in connection with which the mark has acquired distinctiveness and the goods or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods or services in the application upon use.
In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999)(emphasis added).
In the present case, Applicant’s claim is DENIED because the mark in the prior registration is not the same as the mark in this application and the goods in the prior registration have not been proved to be sufficiently related to the goods in this application.
An intent-to-use applicant who has used the mark on related goods and/or services may file a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use if applicant can establish that, as a result of applicant’s use of the mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); TMEP §1212.09(a).
The following requirements must be proven by Applicant to establish acquired distinctiveness for marks in intent-to-use applications:
(1) Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of a prior registration for the same mark for related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and
(2) Applicant must show the extent to which the goods and/or services recited in the intent-to-use application are related to the goods and/or services in connection with which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use. The showing necessary to establish relatedness will be decided on a case by case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.
Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1771 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999); TMEP §1212.09(a). The burden of proving that a mark has acquired distinctiveness is on Applicant. See In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959).
Here, the prior registration is for a mark that is not the same as the mark in this application. This application is for a standard character mark, STUDEBAKER, whereas the mark in the prior registration is a special form design mark, S STUDEBAKER CLOTHING COMPANY. Also, Applicant has not shown that the clothing goods in the prior registration are sufficiently related to wallets in this application. As such, Applicant has not satisfied either of the requirements set forth above and the claim of acquired distinctiveness must be DENIED.
PLEASE NOTE: Because this Office Action raises a new issue, an appeal to the Trademark Trial and Appeal Board on any issue in this Office Action is considered premature at this time. Therefore, Applicant must respond on the merits directly to the trademark examining attorney. 37 C.F.R. §§2.64 and 2.141; TMEP §714.03.
In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number. No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/V.J./
Gene V.J. Maciol, II
Trademark Attorney Advisor
Law Office 103
571 272 9280
571 273 9280 fax
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.