To: | Smith Sport Optics, Inc. (bulchis.ed@dorsey.com) |
Subject: | TRADEMARK APPLICATION NO. 78929234 - SMITH - 68331 |
Sent: | 11/20/2006 12:53:05 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/929234
APPLICANT: Smith Sport Optics, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SMITH
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CORRESPONDENT’S REFERENCE/DOCKET NO: 68331
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 78/929234
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
2(e)(4) - Surname Refusal
Registration is 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 following five factors are used to determine whether a mark is primarily merely 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.
Please see the attached evidence from The White Pages.com, establishing the surname significance of the surname “SMITH”. This evidence shows the proposed mark appearing over 300 times as a surname in a nationwide telephone directory of names. In addition, “SMITH” has the distinct structure and pronunciation of a surname. Therefore, registration must be refused under Trademark Act Section 2(e)(4).
Surname May be Registrable Under Section 2(f)
Applicant may seek Principal Register registration under Trademark Act Section 2(f), 15 U.S.C. §1052(f), by claiming acquired distinctiveness through ownership of U.S. Registration Nos. 1189158, 1805877 and 1559587 (see below). To do so, applicant must submit the following statement, if accurate:
The mark has become distinctive of the goods and/or services as evidenced by ownership of U.S. Registration Nos. 1189158, 1805877 and 1559587 on the Principal Register for the same mark for related goods or services.
37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.
If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement.
Claim of Ownership
If applicant is the owner of U.S. Registration Nos. 1189158, 1805877, 0972106, or 1559587 then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration Nos. 1189158, 1805877 and 1559587.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Morgan L. Wynne/
Morgan Laura Wynne
Trademark Examining Attorney
Law Office 117
Phone: (571) 272-8290
Fax: (571) 273-9117
HOW TO RESPOND TO THIS OFFICE ACTION:
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.