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. 

 

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:

 

No Conflicting Marks Found

 

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:

 

• 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.

 

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:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.