Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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: 11/21/2009

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must submit certain documents electronically.  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and maintain a valid e-mail address.  37 C.F.R. §§2.23(a), (b); TMEP §§819, 819.02(a), (b).  Failure to do so will incur an additional fee of $50 per class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.

 

Therefore, applicant must submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of power of attorney; (6) appointments and revocations of domestic representative; (7) amendments to allege use; (8) statements of use; (9) requests for extension of time to file a statement of use; and (10) requests to delete a Trademark Act Section 1(b) basis.  If applicant files any of these documents on paper instead of via TEAS, then applicant must also submit the $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv), 2.23(a)(1); TMEP §§819.02(b), 819.04.  Telephone responses that result in the issuance of an examiner’s amendment will not incur this additional fee. 

 

The referenced application has been reviewed by the assigned trademark examining attorney. 

 

Search Results

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Surname Refusal: Section 2(e)(4)

Registration is refused because the applied-for mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211.  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, 17-18, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); see TMEP §§1211, 1211.01.

 

Please see the attached evidence from the Internet, establishing the surname significance of the surname COOLIDGE.  This evidence includes on-line directory listings and 2000 U.S. Census results showing over 2,883 instances of Coolidge as a surname.  As the attached on-line dictionary search demonstrates, there is no common ordinary meaning for the word Coolidge other than a surname.  The applicant’s mark has the look and feel of a surname, which is bolstered by the fact that it was the surname of a former American president.  The fact that a term looks and sounds like a surname may contribute to a finding that the primary significance of the term is that of a surname.  In re Giger, 78 USPQ2d 1405, 1409 (TTAB 2006); In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988); In re Petrin Corp., 231 USPQ 902, 904 (TTAB 1986); see TMEP §1211.01(a)(vi).

 

Supplemental Register

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

Information Requirement

The applicant must indicate if the surname is the surname of anyone associated with the applicant or the goods.  See 37 C.F.R. §2.61(b); TMEP §§808.01(a), 814.

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

 

/Mary Boagni/

Examining Attorney

Law Office 114

571-272-9130

Law Office 114 fax: 571-273-9114

 

 

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77803365) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 11/21/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77803365&doc_type=OOA&mail_date=20091121 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 11/21/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.