Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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  78/470639

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Office 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 section 1105.01.

 

Refusal to Register - Surname

 

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).  Please see the attached evidence from the Nexis database, establishing the surname significance of the mark.

 

An applicant may register a surname under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f), by establishing acquired distinctiveness.  The applicant may present any of the following to establish distinctiveness.

 

(1) The applicant may rely on a claim of ownership of one or more prior registrations on the Principal Register for a mark which is the same as the mark in this application for the same or related goods.  37 C.F.R. Section 2.41(b); TMEP section 1212.04.

 

(2) The applicant may provide a statement that the mark has become distinctive of the applicant's goods by reason of substantially exclusive and continuous use in commerce by the applicant for the five years next preceding the date of the statement.  The applicant must verify this statement with an affidavit or a declaration under 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.41(b); TMEP section 1212.05.

 

(3) The applicant may submit actual evidence of acquired distinctiveness.  37 C.F.R. Section 2.41(a); TMEP section 1212.06.

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Russ Herman/

Attorney

Law Office 108

(571) 272-9172

(571) 273-9108 (fax)

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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

 

                                                                         108B8C

Print Request:   Selected Document(s): 1,2,14,16,20,24,28,36

                 

Time of Request: March 22, 2005  10:19 AM EST

 

Number of Lines: 63

Job Number:      1841:37097168

 

Client ID/Project Name: 

 

Research Information:

 

 News, All (English, Full Text)

blackburn w/10 new york

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Send to:  HERMAN, RUSS

          TRADEMARK LAW LIBRARY

          2101 CRYSTAL PLAZA ARC

          MAILBOX 314

          ARLINGTON, VA 22202-4600

          

          

 

 

1.  The Ottawa Sun, March 20, 2005 Sunday,   FINAL EDITION, SPORTS; Sunday Backspin; Pg. SP9, 929 words, BELIEVE IT OR NOT, GOLF'S NEARLY ON THE FOREFRONT, BY CHRIS STEVENSON, OTTAWA SUN

WONDERING: Remember Dan Blackburn? He was a junior-aged goalie with the New York Rangers who played  ...

 

2. The Commercial Appeal (Memphis, TN), March 19, 2005 Saturday Final Edition, 474 words, Daybreak, Compiled by Mickie Anderson with contributions from reporters Richard Locker and Lela Garlington.

U.S. Rep. Marsha Blackburn, she of the $1,000 "weekend of shopping, dining and entertainment" in New York City, is now inviting the  ...

 

14. The Houston Chronicle, March 08, 2005, Tuesday, 2 STAR EDITION, STAR;, Pg. 5, 696 words, Controversial play honored; Sikh playwright's protested work wins the Blackburn Prize, EVERETT EVANS, Awards

directors are Mimi Kilgore (Blackburn's sister), of Houston and New York, and William Blackburn (her husband), of London.

 

16.  Variety, March 7, 2005 - March 13, 2005, LEGIT REVIEWS; Off-Broadway; Pg. 54, 1214 words, AFTER ASHLEY, DAVID ROONEY

Rosenthal Susan Smith Blackburn Prize winner Gina  ...

Ashley" arrives in New York with considerable cachet after its  ...

 

20. The Associated Press State & Local Wire, March 1, 2005, Tuesday, BC cycle, State and Regional, 412 words, In like a lion ... and yet winter already seemed altered, By BEN DOBBIN, Associated Press Writer, ROCHESTER, N.Y.

cities, meteorologist Alan Blackburn said. Parts of eastern New York could end up with as much as  ...

 

24. The Associated Press State & Local Wire, February 25, 2005, Friday, BC cycle, Sports News, 1331 words, SPORTS EXTRA: Once-fearsome boxer in longest fight of his life; The address for his fund is Gerald McClellan Trust, c/o Fifth Third Bank, P.O. Box 120, Freeport, IL 61032., By MICHAEL HIRSLEY, Chicago Tribune, FREEPORT, Ill.

boxing photographer Teddy Blackburn, who brought him to New York for an awards  ...

 

28. San Antonio Express-News (Texas), February 20, 2005, Sunday, , METRO, Pg. 5J, 1087 words, Gallery Stroll, Dan R. Goddard

manager for the Robert Blackburn studio in New York City. He now teaches  ...

 

36. Newark Advocate, February 16, 2005 Wednesday, Pg. 4A, 250 words, 'J.R.' Paul Eugene McArtor Jr.

Heath, Winkie (George) Blackburn of Gahanna, Marcia Grove of Heath, Courtnee Andrews of New York, Keith (Belushi) Andrews,