Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/500691

 

This letter responds to the applicant’s communication filed on August 12, 2005.

 

SURNAME FINAL REFUSAL

 

The applicant argues that its mark ROGERS is not primarily, merely a surname because it does not identify the name of any individual associated with the applicant. There are SEVERAL factors to consider when determining if a mark is  primaily, merely a surname. The fact that the name may identify an individual associated with the applicant is ONE of those factors and not the determining one.

 

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 §1211.01.  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.

 

The fact is that ROGERS is not a rare surname and as demonstrated in first office action and again herewith. Rather, the name is indeed a common surname. See attached evidence which shows that it ranks 54 as the most common surname with 307,500 people with that name in the United States. Furthermore, there is no other recognized meaning of the term in the dictionary. In addition , it looks and sounds like a surname.

 

Applicant refers to U.S. Registration No., 2,272809 owned by the applicant but a review of that mark shows that it is the name ROGERS combined with a design, so it would not be considered primarily merely a surname under the statute.

 

The applicant also argues “the Rogers Seed Company was established in 1876.” While that is certainly very interesting, it has no relevance here. If the applicant intends to seek registration of the mark based upon long use of the mark, the applicant must follow the directions set forth in the earlier office action for claiming distinctiveness under Section 2(f). For the applicant’s convenience, the requirements are repeated herein.

 

Applicant may register a surname as a trademark under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by establishing acquired distinctiveness in any one of the following three ways:

 

(1) submitting a claim of ownership of one or more prior registrations on the Principal Register for a mark that is the same as the mark in this application for the same or related goods and/or services.  37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.OR

 

(2) submitting a statement that the mark has become distinctive of applicant's goods and/or services by reason of substantially exclusive and continuous use in commerce by the applicant for the five years preceding the date of the statement.  Applicant must verify this statement with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §§1212.05 et seq. OR

 

(3) submitting actual evidence of acquired distinctiveness.  37 C.F.R. §2.41(a); TMEP §§1212.06 et seq.

 

TMEP §§1211 and 1212.02(a).

 

Accordingly, the refusal is maintained.

 

 Proper Response to Final Office Action

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; or (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a); TMEP §715.01.  If applicant fails to respond within six months of the mailing date of this refusal, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

/LESLEY LAMOTHE/

Trademark Attorney

Law Office 103

571-272-9184

e-mail - lesley.lamothe@uspto.gov

 

 

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 has been 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.