UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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: 12/12/2007

 

THIS IS A FINAL ACTION.

 

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 on December 5, 2007.  The refusal under Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4), is now made FINAL for the reasons set forth below.  37 C.F.R. §2.64(a).

 

Final 2(e)(4) - Surname Refusal

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 has made of record evidence obtained from the NAMESTATISTICS website which states that around 10,000 U.S. last names are LOMBARDI.  Furthermore, the applicant’s submission of an “AFFIDAVIT OF CONSENT TO USE FAMILY NAME” is further evidence that the term “LOMBARDI” is merely a surname.

 

The inclusion of the term “CREAM OF LIMONCELLO” does not obviate the finding of mere surname significance in the present case.  As stated in the first Office action, 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).  The examining attorney has made of record substantial evidence showing that the term “CREAM OF LIMONCELLO” refers to a type of alcoholic beverage.

 

Finally, the applicant has referenced Registration Number 3003866 for “LOMBARDI SOFTWARE” in an attempt to suggest the present application should be allowed.  Please note, third party registrations may be made of record only when accompanied by legible, soft copies of the registrations themselves or the electronic equivalent thereof.  Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-2 9TTAB 1992).  Because the applicant has merely provided a reference to the registration, it should not be considered part of the record evidence.  See In re Hungry Pelican, Inc., 219 USPQ 1202, 1204 n.5 (TTAB 1983); In re Delbar Products, Inc., 217 USPQ 859, 861 (TTAB 1981).

 

Nevertheless, the examining attorney has researched the referenced serial number, and has found that the mark is registered only because of a claim of acquired distinctiveness under Section 2(f) of the Trademark Act.  This registration also contains a disclaimer of the generic term “SOFTWARE.”   

 

Please note, only 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 Trademark Trial and Appeal Board has set forth the requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

 

(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).

 

Final Refusal

If the applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  The applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

  

 

 

 

 

 

 

/Geoffrey Fosdick/

Geoffrey Fosdick

Trademark Attorney

Trademark Office 111

(571) 272-9161

 

 

 

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.

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 12/12/2007 FOR

APPLICATION SERIAL NO. 77113724

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77113724&doc_type=OOA&mail_date=20071212 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 12/12/2007.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.