| To: | Vulcan Inc. (stepn@foster.com) |
| Subject: | TRADEMARK APPLICATION NO. 77116637 - SOUTH LAKE UNION SEA - 336-60 |
| Sent: | 1/9/2008 1:58:25 PM |
| Sent As: | ECOM117@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/116637
MARK: SOUTH LAKE UNION SEA
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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: Vulcan Inc.
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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: 1/9/2008
The Office has reassigned this application to the undersigned trademark examining attorney. This letter responds to applicant’s communication filed on December 19, 2007. The examining attorney has reviewed the response and has determined the following.
The requirement for a substitute specimen is SATISFIED and this requirement is hereby WITHDRAWN.
The refusal under Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2), is CONTINUED and MAINTAINED for the reasons set forth in the prior action.
The refusal on the basis of a duplicate applications is CONTINUED and MAINTAINED until such time as the duplicate application abandons.
Applicant must now respond to the following requirement in light of applicant’s response.
STATEMENT OF ACQUIRED DISTINCTIVENESS
In the response, applicant attempts to overcome the 2(e)(2) refusal (on the basis that the mark is geographically descriptive) by arguing that the mark has acquired secondary meaning. However, no statement of acquired distinctiveness or evidence of acquired distinctiveness is of record. If applicant believes that its mark has acquired distinctiveness, that is, that it has become a distinctive source-indicator for the services, applicant may seek registration on the Principal Register under Section 2(f) of the Trademark Act. 15 U.S.C. §1052(f). The Office will decide each case on its own merits.
To determine whether the proposed mark has acquired distinctiveness, the following factors are generally considered: (1) length and exclusivity of use by applicant of the mark in the United States; (2) the type, expense and amount of advertising of the mark in the United States; and (3) applicant’s efforts, such as unsolicited media coverage and consumer studies, in the United States to associate the mark with the source of the goods and/or services identified in the application. In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 U.S.P.Q.2d 1420, 1424 (Fed. Cir. 2005). A showing of acquired distinctiveness need not consider each of these factors, and no single factor is determinative. Id.; see 37 C.F.R. §2.41; TMEP §§1212 et seq.
Evidence of acquired distinctiveness 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., 201 USPQ 957 (TTAB 1979).
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). Applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin. Allegations of sales and advertising expenditures cannot per se establish that a term has acquired significance as a mark. It is necessary to examine the advertising material to determine how the term is used, the commercial impression created by such use, and the significance the term would have to prospective purchasers. The ultimate test in determining acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public to associate the claimed mark with a single source. In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984); Congoleum Corp. v. Armstrong Cork Co., 218 USPQ 528 (TTAB 1983); Bliss & Laughlin Industries Inc. v. Brookstone Co., 209 USPQ 688 (TTAB 1981).
TEAS PLUS FILING REQUIREMENTS
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).
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.
/Charlotte K. Corwin/
Charlotte Klein Corwin
Trademark Examining Attorney
Law Office 117
Phone - (571) 270-1532
Fax - (571) 270-2532
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.