Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/152843

 

 

This letter responds to applicant’s communication filed August 27, 2003.  In the foregoing communication, the applicant argued against the refusal to register applicant’s mark under Section 2(e)(4)) of the Trademark Act on the grounds that the applicant’s mark is primarily merely a surname.  The examining attorney remains of the opinion that the applicant’s mark, WENTWORTH, for ceiling fans and electrical lighting fixtures is primarily merely a surname.  Accordingly, the refusal to register is hereby continued and made FINAL.

 

Although the examining attorney has reviewed the applicant’s response carefully, she is not persuaded by the applicant’s arguments for the following reasons:

 

 

Primarily Merely A Surname – Section 2(e)(4)

As set forth in the First Office Action, the examining attorney refuses registration on the Principal Register because the mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. Section 1052(e)(4); TMEP section 1211.  The examining attorney must consider the primary significance of the mark to the purchasing public to determine whether a term is primarily merely a surname.  In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (CCPA 1975). 

 

The term WENTWORTH is a surname.  The examining attorney refers to the an excerpt from a search in the Yahoo® computerized “people search” database in which the surname WENTWORTH appeared in over two hundred telephone listings.  See attachments.  The Yahoo search only provides the first two hundred names when a first initial or first name is not provided, as evidenced by the fact that the last page of the search results still listed individuals with first names beginning with the letter “B.”  This evidence, coupled with the PHONEDISC evidence attached to the First Office Action, demonstrates that the applicant’s mark is primarily merely a surname.

 

The applicant dismisses the listings from the PHONEDISC database as representing “0.004% of the total percent of the U.S. population.”  See, applicant’s communication of August 27, 2003, page 4.  This “percentage-of-the-entire -population” argument is wholly unpersuasive.  The profuse diversity of surnames in this country is amply reflected in the PHONEDISC computer database.  If one were to take a statistical measurement of this database for common names like “Smith” or Jones,” each would constitute a relatively small fraction of the total database content. 

 

The applicant notes that “many trademarks which incorporated the word “Wentworth” have been registered on the Principal Register without the need for 2(f) evidence.”  See, applicant’s communication of August 27, 2003, page 3.  The applicant’s argument is not convincing.   The applicant identifies nine registrations containing the term WENTWORTH.   The first, GEL-WENTWORTH is not primarily merely a surname, given the addition of the term “GEL.”  Similarly, WENTWORTH GALLERY for clothing (and not a gallery) and WENTWORTH MANSION for hotel services, are not primarily merely a surname in light of the arbitrary term GALLERY and the suggestion term MANSION in the marks.  Five of the remaining marks cited by the applicant contain first names, or initials,  furthering the examining attorney’s assertion that the term WENTWORTH is primarily merely a surname.  The sole registration that is primarily merely a surname, but registered on the Principal Register without benefit of Section 2(f) acquired distinctiveness is WENTWORTH, U.S. Registration No. 2257983.

 

With respect to this sole registration, it is sufficient to note that “previous decisions of examiners allowing other marks are without evidentiary value and are not binding upon the agency or the Board.  Each case must be decided on its own merits.” (emphasis added).  In re National Novice Hockey League, Inc., 222 USPQ 638,641 (TTAB 1984.  Even if some prior registrations have some characteristics similar to this application, the PTO's allowance of such prior registrations does not bind the Trademark Trial and Appeal Board, see In re Busch Entertainment Corp., 60 USPQ2d 1130 (TTAB 2000); and In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000), or a reviewing court, see In re Nett Designs, 236 F.3d 1339 (Fed. Cir. 2001), 57 USPQ2d 1564 (TTAB 1999).

 

Finally, the applicant avers that the term WENTWORTH has “geographical significance” and provides the names (but not additional information) about locations in the United States containing the term WENTWORTH.  The applicant failed to provide the town size or any additional information about these geographic areas.  As such, the examining attorney must presume that these geographic locations are small and relatively unknown, and that the primary significance of the term WENTWORTH is not geographic.

 

As such, the applicant has failed to overcome the prima facie evidence demonstrating that the applicant’s mark is primarily merely a surname.

 

 

Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(4).  Said refusal to register is hereby made FINAL.

 

 

CONCLUSION

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146; TMEP Chapter 1700 regarding petitions.  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a). 

 

If the applicant has any questions or needs assistance in responding to this Final Office Action, please telephone the assigned examining attorney.

 

 

 

/Andrea Koyner Nadelman/

Andrea Koyner Nadelman

Trademark Attorney

Law Office 110

(703) 308-9110 ext. 422

(703) 746-8110 FAX

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.