| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77271665 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examining Attorney has initially refused Applicant’s mark under Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §§1211 et seq. on the grounds that the proposed mark is primarily merely a surname. Under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by establishing acquired distinctiveness, the Applicant may register a surname as a trademark. For the reasons set forth below it is believed that the Applicant satisfies the requirements for registerablity and the refusal to register should be withdrawn: 1. The Applicant is the owner of U.S. Registration Nos. 1064501, 1074608, 1244574, 1630158, 1092303, and 2818264. All of these prior registrations use the term MCGREGOR, and only some of the registrations registered under 2(f). All of these prior registrations are in International Class 25 for similar or related goods. 2. Further, the ownership of the prior registrations containing the identical surname, supports a finding that the longstanding use of the term MCGREGOR by the Applicant has significance other than as a surname and is registerable. 3. In addition, the Applicant has longstanding use of the mark MCGREGOR in Class 25 since February 21, 1923 as evidenced by the Applicant’s prior mark Registration No. 1630158. Also, attached are several screen shots of the Applicant’s web site, further evidencing their longstanding use of the mark. In as such as the word mark MCGREGOR is identical to the use of the prior registrations for MCGREGOR and the longstanding use by the Applicant of the mark MCGREGOR, the Applicant believes it has satisfied the requirements for trademark registerability and the surname refusal should be withdrawn. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_69222245190-105410347_._McGregor_shop_online_USA__Bermuda_s___Swimshorts.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT\IMAGEOUT\772\716\77271665\xml1\ROA0002.JPG |
| ORIGINAL PDF FILE | evi_69222245190-105410347_._McGregor_shop_online_USA__Jackets.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT\IMAGEOUT\772\716\77271665\xml1\ROA0003.JPG |
| ORIGINAL PDF FILE | evi_69222245190-105410347_._McGregor_shop_online_USA__Polo_s.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT\IMAGEOUT\772\716\77271665\xml1\ROA0004.JPG |
| ORIGINAL PDF FILE | evi_69222245190-105410347_._McGregor_shop_online_USA__Shirts___Sweaters.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT\IMAGEOUT\772\716\77271665\xml1\ROA0005.JPG |
| DESCRIPTION OF EVIDENCE FILE | Screen shots of McGregor USA web site. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /julie e kretzschmer/ |
| SIGNATORY'S NAME | Julie E. Kretzschmer |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 06/06/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jun 06 11:07:49 EDT 2008 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20080606110749232187-7727 1665-420d5728d5acf103812f aba30df33b1f147-N/A-N/A-2 0080606105410347370 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Examining Attorney has initially refused Applicant’s mark under Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §§1211 et seq. on the grounds that the proposed mark is primarily merely a surname.
Under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by establishing acquired distinctiveness, the Applicant may register a surname as a trademark. For the reasons set forth below it is believed that the Applicant satisfies the requirements for registerablity and the refusal to register should be withdrawn:
1. The Applicant is the owner of U.S. Registration Nos. 1064501, 1074608, 1244574, 1630158, 1092303, and 2818264. All of these prior registrations use the term MCGREGOR, and only some of the registrations registered under 2(f). All of these prior registrations are in International Class 25 for similar or related goods.
2. Further, the ownership of the prior registrations containing the identical surname, supports a finding that the longstanding use of the term MCGREGOR by the Applicant has significance other than as a surname and is registerable.
3. In addition, the Applicant has longstanding use of the mark MCGREGOR in Class 25 since February 21, 1923 as evidenced by the Applicant’s prior mark Registration No. 1630158. Also, attached are several screen shots of the Applicant’s web site, further evidencing their longstanding use of the mark.
In as such as the word mark MCGREGOR is identical to the use of the prior registrations for MCGREGOR and the longstanding use by the Applicant of the mark MCGREGOR, the Applicant believes it has satisfied the requirements for trademark registerability and the surname refusal should be withdrawn.
