| To: | Colgate-Palmolive Company (michael_j_smith@colpal.com) |
| Subject: | TRADEMARK APPLICATION NO. 77185075 - MENNEN - N/A |
| Sent: | 4/30/2008 1:41:57 PM |
| Sent As: | ECOM105@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/185075
MARK: MENNEN
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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: Colgate-Palmolive Company
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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: 4/30/2008
THIS IS A FINAL ACTION.
This letter responds to applicant’s communication filed on March 3, 2008 in which applicant argued against the primarily merely a surname refusal. The examining attorney has carefully reviewed the applicant’s arguments regarding the primarily merely a surname refusal but has found them unpersuasive.
The primarily merely a surname refusal is now made FINAL for the reasons set forth below.
The following five factors are used to determine whether a mark is primarily merely a surname:
TMEP §1211.01. See In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995).
There is no rule as to the kind or amount of evidence necessary to make out a prima facie showing that a term is primarily merely a surname. This question must be resolved on a case-by-case basis. See, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., Ltd., 230 USPQ 79 (TTAB 1986). The entire record is examined to determine the surname significance of a term. The following are examples of evidence that is generally considered to be relevant: telephone directory listings; excerpted articles from computerized research databases; evidence in the record that the term is a surname; the manner of use on specimens; dictionary definitions of the term and evidence from dictionaries showing no definition of the term. TMEP §1211.02(a).
Attached to the initial Office action was evidence from LexisNexis, a national database, showing the proposed mark appearing 205 times as a surname in a nationwide telephone directory of names. In addition, attached was a copy of the page from Merriam-Webster’s Online Dictionary wherein the word MENNEN would appear if, indeed, it were a defined term. The absence of the term in the dictionary supports the finding that the term is primarily merely a surname. TMEP §1211.02(b)(v). Finally, attached was a webpage showing that the founder of the company that later merged with applicant had the proposed mark as a surname.
Applicant’s proposed mark has no recognized meaning other than as a surname, someone connected with the applicant has the mark as his surname, and the mark as a standard character drawing is not stylized to remove its primary significance from that of a surname. Thus, three of the five factors used to determine whether the mark is primarily merely a surname definitely apply here.
Moreover, even if “MENNEN” is a relatively rare surname, a rare surname may be unregistrable under Trademark Act Section 2(e)(4) if its primary significance to purchasers is that of a surname. E.g., In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); In re Giger, 78 USPQ2d 1405 (TTAB 2006); see TMEP §1211.01(a)(v). There is no minimum number of telephone directory listings needed to prove that a mark is primarily merely a surname. See TMEP §1211.02(b)(i); see, e.g., In re Petrin Corp., 231 USPQ 902 (TTAB 1986).
Applicant also notes that the owner with the surname MENNEN is deceased and that the company is now owned by Colgate-Palmolive. The factor states that someone associated with the applicant has the mark as his surname, not the applicant itself. The Wikipedia webpage demonstrates that Gerhard Mennen is associated with Colgate-Palmolive and the Mennen brand. Thus, this factor still weighs in favor of the refusal.
Finally, applicant argues that the mark has a fanciful look and feel as a play on the intended users of the goods. Applicant argues that the target audience of the product is men and the mark is a play on that word. However, the goods are not limited in the identification of goods as limited to men as the intended users. Further, as shown by the submitted specimens other marks on the goods include the wording “LADY SPEED STICK” which is most likely targeted to women and not men as applicant suggests. See Exhibit A. The Wikipedia article and searches for Mennen deodorant in online shopping shows that applicant also produces “TEEN SPEED STICK” a similar product targeted to teens. See Exhibit B. There is nothing in the record and real world evidence indicates that applicant’s goods are not limited to men as the intended users. Since the term is in standard character, it is not stylized not does it have a fanciful look and feel.
Even if the mark is found to be a rare surname, it has no other recognized meaning, is the surname of someone associated with the mark and has no stylization to detract from its primarily merely a surname meaning. Thus, the evidence establishes that the term is a surname and refusal of registration based on Trademark Act Section 2(e)(4) is made final.
The applied-for mark has been refused registration on the Principal Register. However, applicant may respond to the refusal by (1) submitting evidence and arguments in support of registration, (2) amending the application to seek registration under Section 2(f) of the Trademark Act, or (3) amending the application to seek registration on the Supplemental Register. 15 U.S.C. §§1052(f) and 1091. Amending the application to the Supplemental Register or to Section 2(f) does not preclude applicant from submitting evidence and arguments against the refusals.
Applicant can amend its application to seek registration on the Principal Register based on a claim of acquired distinctiveness by (1) submitting actual evidence that the mark has acquired distinctiveness of applicant’s goods or services, (2) claiming ownership of a prior U.S. registration for the same mark and the same or related goods and/or services, or (3) providing the following verified statement: “The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least five years immediately before the date of this statement.” 15 U.S.C. §1052(f); 37 C.F.R. §§2.41(a) and (b); TMEP §§1212.03(d), 1212.04, 1212.05.
To amend to the Supplemental Register, applicant need only provide a written request to do so.
PRINCIPAL REGSITER UNDER 2(F)
To amend the application to Section 2(f) based on five years’ use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:
The mark has become distinctive of the goods through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.
TMEP §1212.05(d). Applicant must verify this statement with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33. 37 C.F.R. §2.41(b); TMEP §1212.05(d).
Although Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:
RESPONSE GUIDELINES
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 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). 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 matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants, etc.). TMEP §§712 et seq.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Tashia A. Bunch/
Tashia A. Bunch
Trademark Examining Attorney
Law Office 105
Phone: 571-272-8195
Fax: 571-273-8195
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.
