UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/431724
MARK: CHANTECAILLE
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CORRESPONDENT ADDRESS: OSTROLENK FABER GERB & SOFFEN, 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: Chantecaille Beaute, 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.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME
The following five factors are used to determine whether a mark is primarily merely a surname:
·the rareness of the surname;
· whether anyone connected with the applicant has the mark as his or her surname;
· whether the term has any recognized meaning other than as a surname;
· whether the mark has the structure and pronunciation of a surname; and
· whether the mark is sufficiently stylized to remove its primary significance from that of a surname.
TMEP §1211.02(b). See In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995); In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994) and cases cited therein.
Please see the attached evidence establishing the surname significance of the surname CHANTECAILLE. Although the name appears to be a relatively rare surname, a rare surname may be unregistrable under Trademark Act §2(e)(4), 15 U.S.C. §1052(e)(4), if its primary significance to purchasers is that of a surname. See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985) (DARTY); In re Rebo High Definition Studio Inc., 15 USPQ2d 1314 (TTAB 1990) (REBO); 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. TMEP §1211.02(b)(i).
SECTION 2(F) ACQUIRED DISTINCTIVENESS
An intent-to-use applicant who has used the mark on related goods or services may file a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an amendment to allege use or a statement of use if applicant can establish that, as a result of applicant’s use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 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 submit evidence to establish a sufficient relationship between the goods and/or services in connection with which the mark has acquired distinctiveness and the goods and/or services recited in the intent-to-use application to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use.
In re Rogers, 53 USPQ2d 1741 (TTAB 1999).
If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement.
PRIOR REGISTRATIONS
If applicant is the owner of U.S. Registration Nos. 3282582 and 2408199, then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 3282582 and 2408199.
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.
To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.
/Kelly McCoy/
Trademark Examining Attorney
Law Office 107
Phone - (571) 272-8976
Fax - (571) 273-8976
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.