To: | Waters, Michael (martzlaw@gmail.com) |
Subject: | TRADEMARK APPLICATION NO. 77113724 - LOMBARDI'S CREAM OF LIMONCELLO - N/A |
Sent: | 6/11/2007 1:48:36 PM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/113724
APPLICANT: Waters, Michael
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: LOMBARDI'S CREAM OF LIMONCELLO
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 77/113724
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 reviewed the referenced application and has determined the following.
Search Results
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
2(e)(4) - Surname Refusal
The examining attorney refuses registration on the Principal Register because the mark is primarily merely a surname. Trademark Act Section 2(e)(4), 15 U.S.C. Section 1052(e)(4); TMEP section 1211. The examining attorney must consider the primary significance of the mark to the purchasing public to determine whether a term is primarily merely a surname. In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (CCPA 1975). The examining attorney attaches hereto evidence obtained from the NAMESTATISTICS website which states that around 10,000 U.S. last names are LOMBARDI.
Indeed, the applicant’s “AFFIDAVIT OF CONSENT TO USE FAMILY NAME,” which was submitted along with the application, is further evidence that the term “LOMBARDI” is merely a surname.
Please note that the inclusion in a mark of a highly descriptive or generic term for the goods or services does not overcome its surname significance. In re E. Martinoni Co., 189 USPQ 589 (TTAB 1975) (LIQUORE MARTINONI is primarily merely a surname despite addition of term LIQUORE). Accordingly, the addition of “CREAM OF LIMONCELLO” does not obviate the finding of mere surname significance. The term “CREAM OF LIMONCELLO” refers to a type of alcoholic beverage. See attachments.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
The applicant must remove the below statement from the application record.
The name(s), portrait(s), and/or signature(s) shown in the mark identifies Yuli Waters, whose consent(s) to register is made of record.
Consent statements are only needed when the name of an individual appears in the mark to be registered, and the name shown in the mark identifies a particular living individual. The name Yuli Waters does not appear in the mark to be registered. Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206 et seq.
As stated above, consent statements are necessary when a name in a mark identifies a particular living individual. The term “LOMBARDI” does not refer to a particular individual. According to the evidence of record, it refers to about ten thousand individuals in the United States.
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. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
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.
Although the literal translation of “LIMONCELLO” may be “small lemon,” this translation is not necessary because the term “LIMONCELLO” has a readily understood meaning as an alcoholic beverage. See attachments.
The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations. Please note that an application serial number or registration number is needed to be able to access this database. TARR is available 24 hours a day, 7 days a week.
/Geoffrey Fosdick/
Geoffrey Fosdick
Trademark Attorney
Trademark Office 111
(571) 272-9161
NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS: In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant. Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow. The Office action will not be attached to the e-mail notice. Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address. TDR is available 24 hours a day, seven days a week, including holidays and weekends. This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.
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.