| To: | Homer TLC, Inc. (sharon_bart@homedepot.com) |
| Subject: | TRADEMARK APPLICATION NO. 78918560 - TORRINGTON - N/A |
| Sent: | 8/3/2007 6:13:36 AM |
| Sent As: | ECOM117@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/918560
MARK: TORRINGTON
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CORRESPONDENT ADDRESS: |
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: Homer TLC, 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.
ISSUE/MAILING DATE: 8/3/2007
THIS IS A FINAL ACTION.
This letter responds to applicant’s communication filed on 6/6/07.
The refusal under Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4), is now made FINAL for the reasons set forth below. 37 C.F.R. §2.64(a).
Registration was refused because the proposed mark is primarily merely a surname. Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §§1211 et seq. 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, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975).
The examining attorney has considered the applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(e)(4) is maintained and made FINAL.
Applicant argues that TORRINGTON (1) is not primarily merely a surname as applied to the indicated goods, (2) as a surname in the United States is extremely rare, and is more rare than many surnames held registrable on the Principal Register, and (3) is not the surname of anyone connected to Applicant.
The examining attorney disagrees, and continues to find that TORRINGTON is primarily merely a surname.
The following five factors are used to determine whether a mark is primarily merely a surname:
(1) The rareness of the surname;
(2) Whether anyone connected with applicant uses the mark as a surname;
(3) Whether the term has any recognized meaning other than as a surname;
(4) Whether the mark has the structure and pronunciation of a surname; and
(5) Whether the mark is sufficiently stylized to remove its primary significance from that of a surname.
In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995); TMEP §1211.01.
Although “TORRINGTON” appears to be a relatively rare surname, a rare surname may be unregistrable under Section 2(e)(4) if its primary significance to purchasers is that of a surname. E.g., In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); In re Giger, 78 USPQ2d 1405 (TTAB 2006); see 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. See, e.g., In re Petrin Corp., 231 USPQ 902 (TTAB 1986); see TMEP §1211.02(b)(i). In this case, the examining attorney notes that the applicant has not provided any evidence that TORRINGTON has any recognized meaning other than as a surname. Moreover, the applicant has not contested that TORRINGTON has the structure and pronunciation of a surname, the mark does not feature any stylization sufficient to remove its primary significance from that of a surname.
The fact that that no one connected with the applicant uses the mark as a surname does not obviate the refusal. Moreover, the Applicant’s assertion that that more common surnames including, RIVERA, MILLER, JOHNSON, GILBERT, HUDSON and FRANKLIN, t have been found to be registrable on the Principal Register without a showing of acquired distinctiveness is not relevant to the case at hand. Prior decisions and actions of other trademark examining attorneys in registering different marks are without evidentiary value and are not binding upon the Office. Each case is decided on its own facts, and each mark stands on its own merits. AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994); In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978).
There is no rule as to the kind or amount of evidence necessary to make out a prima facie showing that a term is primarily merely a surname. This question must be resolved on a case-by-case basis. See, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., Ltd., 230 USPQ 79 (TTAB 1986). The entire record is examined to determine the surname significance of a term. The following are examples of evidence that is generally considered to be relevant: telephone directory listings; excerpted articles from computerized research databases; evidence in the record that the term is a surname; the manner of use on specimens; dictionary definitions of the term and evidence from dictionaries showing no definition of the term. TMEP §1211.02(a). The examining attorney has attached additional directory listing results from YAHOO.COM.
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); TMEP §1211.01(a)(vi). In this case, TORRINGTON clearly has the look and sound of a surname. In support of this position, the examining attorney attaches dictionary definitions of other similar sounding surnames. (See attachments.)
Thus it is clear that the term TORRINGTON is primarily merely a surname and must be refused registration on the Principal Register under Section 2(e)(4) of the Trademark Act. This action is FINAL.
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html: (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis. If any of these documents are filed on paper, they must be accompanied by a $50 per class fee. 37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i). Telephone responses will not incur an additional fee. NOTE: In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee. 37 C.F.R. §2.23(a)(2).
John Kelly /jmck/
Trademark Attorney
Law Office 117
571.272.9412
Fax: 571.273-9117 (official responses only)
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.
