| To: | MFG Licensing GmbH (tmdocketing@honigman.com) |
| Subject: | TRADEMARK APPLICATION NO. 77271665 - MCGREGOR - 218537-11305 |
| Sent: | 12/18/2007 6:53:11 PM |
| Sent As: | ECOM110@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/271665
MARK: MCGREGOR
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CORRESPONDENT ADDRESS: HONIGMAN MILLER SCHWARTZ AND COHN LLP |
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: MFG Licensing GmbH
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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: 12/18/2007
The assigned trademark examining attorney has reviewed the referenced application, and has determined the following.
Search
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. Section 1052(d); TMEP §704.02.
Registration is also refused because the proposed mark is primarily merely a surname. Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §§1211 et seq. The primary significance of the mark to the purchasing public determines whether a term is primarily merely a surname. In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975).
Please see the attached evidence from Whitepages.com, establishing the surname significance of the surname MCGREGOR. This evidence shows the proposed mark appearing over 300 times as a surname in a nationwide telephone directory of names.
Applicant may register a surname as a trademark under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by establishing acquired distinctiveness in any one of the following three ways:
(1) submitting a claim of ownership of one or more prior registrations on the Principal Register for a mark that is the same as the mark in this application for the same or related goods and/or services. 37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.
(2) submitting a statement that the mark has become distinctive of applicant's goods and/or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years preceding the date of the statement. Applicant must verify this statement with a notarized affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(b); TMEP §§1212.05 et seq.
(3) submitting actual evidence of acquired distinctiveness. 37 C.F.R. §2.41(a); TMEP §§1212.06 et seq.
TMEP §§1211 and 1212.02(a).
Opportunity to Respond
Although the examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
ADVISORY: Claim of Ownership of Pending Application Will Not be Printed
Applicant’s claim of ownership of Application Serial No. 78912604 will not be printed on any registration that may issue from this application because only claims of ownership of pertinent live registrations are printed. If the claimed pending application registers before this application, then applicant may claim ownership of it by registration number. 37 C.F.R. §2.36; TMEP §812.
If applicant has any questions or needs assistance in responding to the Office action, as outlined below, please telephone or email the assigned examining attorney.
/Tricia Sonneborn/
United States Patent & Trademark Office
Trademark Examining Attorney
Law Office 110
phone (571) 272-9225
fax (571) 273-9110
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.
