Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78918560 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

:

REMARKS

In the Office Action, the Examining Attorney refused registration of Applicant’s Mark, under Section 2(e)(4), stating that Applicant’s Mark is primarily merely a surname. Applicant respectfully submits that the mark "TORRINGTON" as applied to the indicated goods does not primarily signify a surname to consumers of Applicant’s goods and is therefore entitled to registration on the Principal Register. Accordingly, Applicant requests that the refusal under Section 2(e)(4) be withdrawn and that Applicant’s application be approved for publication.

DISCUSSION

Reconsideration of the above-identified application is respectfully requested.

1. The Examining Attorney relies upon In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985) and In re Kahan & Weisz Jewlry Mfg. Corp., 184 U.S.P.Q. 421 (C.C.P.A. 1975) for the proposition that "TORRINGTON" is primarily merely a surname. Applicant submits that these cases do not necessarily stand for the proposition that Applicant’s mark is primarily a surname. Darty is distinguishable because the mark at issue was not only the surname of a principal of the business, but also the mark "Darty" was used in the trade name of the company in a manner that indicated its surname significance, i.e. "Darty and Son."

   Further, In re Kahan held that "If [the primary significance of a word when applied to a product is a surname], and it is only that, then it is primarily merely a surname." Id., at 422 (quoting Ex parte Rivera Watch Corp., 106 U.S.P.Q. 145, 149 (Comm’r Pat. 1955) (emphasis in original). Rivera found that "it is not believed that the average member of the purchasing public would, upon seeing ‘Rivera’ used as a trademark on watches, be likely to think of its being a surname…." Id; see also Ex parte Gemex Company, 111 U.S.P.Q. 443, 443 (Comm’r Pat. 1956) (holding that, even though it is a surname, "WELLINGTON" was registrable for bracelets, watch bracelets and watch straps, reasoning that "[t]here is no way of knowing what the impact on the purchasing public is likely to be seeing "WELLINGTON" watch bracelets and straps, or with what, if anything, purchasers are likely to associate the mark."); In re Colt Industries Operating Corp., 195 U.S.P.Q. 75, 77 (T.T.A.B. 1977) (holding that "[i]t is of course well settled that the test to be applied in determining whether a mark is primarily merely a surname when applied to a particular product is the impact or impression which it has upon purchasers, i.e., its primary significance to the purchasing public."); In re BDH Two Inc., 26 U.S.P.Q.2d 1556, 1558 (T.T.A.B. 1993) (holding that a mark is primarily merely a surname if the only significance of the mark is as a surname; GRAINGERS not primarily merely a surname for snacks).

   Under In re Kahan, Ex parte Rivera and its progeny, "TORRINGTON" is not primarily merely a surname as applied to the indicated goods. As further discussed below, "TORRINGTON" as a surname in the United States is extremely rare, and is more rare than many surnames held registerable on the Principal Register and no one connected to Applicant has the surname "TORRINGTON".

   A. "TORRINGTON" as a Surname Is Extremely Rare

   Applicant does not dispute that "TORRIGTON" can be a surname, however, as indicated in the Rivera case and others, surnames that are more common than "TORRINGTON" have been registered on the Principal Register without a showing of acquired distinctiveness. "Rivera" is a much more common surname than "TORRINGTON," as evidenced by the U.S. Census Bureau’s rankings of U.S. surnames. See Exhibit A. According to U.S. Census figures, in 1990 there were approximately 282,500 people in the United States with the surname "Rivera," and 0.113 percent of the U.S. population had the last name "Rivera," making "Rivera" the 61st most popular surname in the United States.

   Considering other cases in which a surname was found to be registrable, "TORRINGTON" clearly falls within the scope of previous court decisions. For example, Applicant notes that "TURNER" (Reg. No. 2,515,605) (typed drawing) was registered on the Principal Register without a showing of acquired distinctiveness under Section 2(f). Further, the mark "FRANKLIN" (Serial No. 76/186,214) was registrable, but the application was abandoned for failure to file a Statement of Use. These marks have surname significance and as a surname are more common, according to 1990 U.S. Census figures, than "TORRINGTON", which does not have a standing in the 1990 U.S. Census. A copy of this reference is attached as Exhibit B.

   Applicant would also like to bring to the Examining Attorney’s attention the trademarks found on the Principal Register listed as Exhibit C without a disclaimer and without a showing of secondary meaning for "JOHNSON", which is the second most common surname in the United States, accounting for approximately 2,025,000 people, and "MILLER", which is the seventh most common surname in the United States, accounting for approximately 1,060,000 people. (Copies of the references listed in Exhibit C are attached hereto as Exhibit D.)

   Additionally, both HUDSON (Reg. No. 1,316,841) and GILBERT (Reg. No. 1,524,373) registered marks for lighting and heating/cooling products, principally consist of words that occur as surnames more frequently than TORRINGTON, which does not have a rank in the United States: "Hudson" ranked 162nd in the United States in the 1990 census, and "Gilbert" ranked 237th. Copies of these records are attached hereto as Exhibit E and made of record.

   B. No Known Link between "TORRINGTON" and Goods of Application

   Applicant is not aware of any historical ties, or any other connection whatsoever, of "TORRINGTON" to lighting and ceiling fans. Applicant therefore submits that "TORRINGTON" is arbitrary as applied to the goods, and indeed, the mark was chosen at random by Applicant, having no known relationship to the goods. Applying the tests from Ex parte Rivera and Ex parte Gemex Company, the average member of the purchasing public would not, upon seeing "TORRINGTON" used as a trademark on Applicant’s goods, be likely to think of it as being a surname. The lack of any known connection between "TORRINGTON" and Applicant’s goods indicates that consumers of Applicant’s goods will not view "TORRINGTON" as primarily merely a surname.

   C. "TORRTINGTON" Is Not the Surname of Anyone Connected With Applicant

   An additional factor in support of the registrability of Applicant’s mark is that "TORRINGTON" is not the surname of an individual associated with Applicant. This lack of connection has been held to be evidence that a mark is not primarily merely a surname. See In re Monotype Corp., 14 U.S.P.Q.2d 1070 (T.T.A.B. 1989) (CALISTO not primarily merely a surname in light of several factors, including that CALISTO was not the surname of anyone connected to the applicant); Ex Parte Omaha Cold Storage Co., 111 U.S.P.Q. 189 (Comm’r Pat. 1956) (DOUGLAS not primarily merely a surname in light of the fact that Douglas was not the surname of any person connected with applicant).

   In view of the above, Applicant respectfully submits that "TORRINGTON" is not primarily merely a surname and that the Examining Attorney’s refusal should be withdrawn.

2. APPLICANT’S MARK IS NOT PRIMARILY MERELY A SURNAME
3. Doubts Resolved in Favor of the Applicant

Applicant notes that on the question of whether a mark would be perceived as primarily merely a surname, the Examining Attorney is to "resolve doubts in favor of the applicant and pass the mark to publication with the knowledge that others who have the same surname and use it or wish to use it for the same or similar goods or services can file a notice of opposition." In re Benthin Management GmbH, 37 U.S.P.Q.2d 1332, 1334 (T.T.A.B. 1995).

CONCLUSION

In view of the foregoing, Applicant respectfully submits that this application is in condition for publication and action consistent therewith is respectfully requested. If a telephone conference would expedite the processing of this application, the Examining Attorney is requested to contact the undersigned at (302) 798-0620.

http://www.census.gov/genealogy/names/dist.all.last. These figures were obtained from the 1990 U.S. Census, the latest for which such figures are available.

²Id.

³ According to Census figures, 0.810 percent of the U.S. population has the last name "Johnson," making "Johnson" the 2nd most popular surname in the United States. "Miller" is the 7th most popular surname in the United States, with 0.424 percent of the U.S. population sharing that last name. (http://www.census.gov/genealogy/names/dist.all.last).

⁴ http://www.census.gov/genealogy/names/dist.all.last

 

Evidence
Evidence in the nature of Exhibit A: US Census Burea figures for Rivera Exhibit B; US Census Burea figures for Torrington Exhibt C: list of marks Exhibit D: copies of registrations listed in Exhibit C Exhibit E: Registration No. 1316841 for Hudson and Registration No. 1524373 for Gilbert has been attached.
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Response Signature
Signature: /Sharon L. Bart/     Date: 06/06/2007
Signatory's Name: Sharon L. Bart
Signatory's Position: Vice President

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either (1) the applicant or (2) a person(s) with legal authority to bind the applicant; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.
        
Serial Number: 78918560
Internet Transmission Date: Wed Jun 06 13:38:25 EDT 2007
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2007060613382555
2612-78918560-37016c03af0350a1493e32bbc8
a31261a-N/A-N/A-20070606131132989707