UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/070795
MARK: WIEGAND
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CORRESPONDENT ADDRESS: Keller & Partner; Patentanwälte AG CH-3000 Bern 7 |
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: Wiegand AG
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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.
INTERNATIONAL REGISTRATION NO. 1007383
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and
(2) Canadian agents/attorneys who represent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).
37 C.F.R. §§11.1, 11.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. TMEP §602.06(b). Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. See TMEP §§602.03, 712.03.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Section 2(e)(4) Refusal - SURNAME
Please see the attached evidence from LexisNexis, establishing the surname significance of the surname WIEGAND. This evidence shows the applied-for mark appearing 2315 times as a surname in a nationwide telephone directory of names[1]. Additional corroborative surname evidence comes from the wording WIEGAND not appearing in the Merriam-Webster Online Dictionary, as well as various Google search return evidence showing widespread use of WIEGAND as a surname.
(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 the application and for the same or related goods and/or services. 37 C.F.R. §2.41(b); TMEP §1212.04. The following wording is suggested: “The mark has become distinctive under Section 2(f) of the goods or services as evidenced by ownership of U.S. Registration No(s). <INSERT IF APPLICABLE> on the Principal Register for the same mark for related goods or services.” TMEP §1212.04(e).;
(2) Submitting the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.” 37 C.F.R. §2.41(b); TMEP §1212.05(d).; or
(3) Submitting actual evidence of acquired distinctiveness. 37 C.F.R. §2.41(a); TMEP §1212.06, Such evidence may include the following: examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark or service mark in the United States; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the applied-for mark as a trademark or service mark; and any other evidence that establishes recognition of the applied-for mark as a source-identifier for the goods and/or services. See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp. of Am., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.
Trademark Act Section 2(f), 15 U.S.C. §1052(f); see 37 C.F.R. §2.41; TMEP §§1211, 1212.
Application May Not Be Amended To Supplemental Register - Advisory
Applicant must respond to the requirement(s) set forth below.
Identification of Goods Unacceptable – Indefinite
Class 10: “Containers specially adapted for dispensing drugs to patients; medical packages with sliding closures, namely {describe the commercial name of the goods in medical field}, containers for the administration of drugs, particularly baskets, trays and containers of plastic; special furniture for medical purposes, particularly for the management of drugs in hospitals, clinics, nursing homes and rest homes, namely {describe the common commercial name of the goods}; portable hospital furniture with plastic trays, namely {indicate the common commercial name of the goods}; serving trolleys for medical patient care”
Class 20: “Furniture; cupboards for hospitals, clinics, nursing homes and rest homes; cupboards for holding medical supplies; cupboards for holding drugs; packaging containers of plastic with sliding covers”
Thus, applicant can only amend the identification to include goods and/or services that are (1) within the scope of the identification in the application as filed, and (2) classified in an international class designated in the application as filed.
Response Guidelines
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
In the response, applicant should explicitly address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements.
The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712. The signer must personally sign and date the response or manually enter their electronic signature in the signature block. TMEP §605.02
/Jordan A. Baker/
Trademark Examining Attorney
Law Office 102
571-272-8844
jordan.baker@uspto.gov
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; 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.
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Search: |
Public Records : Surname Search |
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Terms: |
last-name(WIEGAND) maxresults(2000) |
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Total number found: 2315 |
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No. |
Name |
Address |
Phone |
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1. |
WIEGAND |
811 N CAVIN ST LIGONIER, IN 46767-2009 |
260-894-4872 |
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2. |
WIEGAND |
7866 PYLE SOUTH AMHERST RD AMHERST, OH 44001-2156 |
440-985-1241 |
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3. |
WIEGAND, A J |
2112 ANNA AVE NORTH PLATTE, NE 69101-4579 |
308-534-6164 |
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4. |
WIEGAND, A |
238 ARBOR RD VILLAS, NJ 08251-1405 |
609-886-3456 |
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5. |
WIEGAND, A W |
72 ARMOUR RD MAHWAH, NJ 07430-1844 |
201-529-4755 |
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6. |
WIEGAND, A |
1472 BRIDGEDALE RD CRYSTAL LAKE, IL 60014-8696 |
815-459-2327 |
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7. |
WIEGAND, A |
25 CHESTERFIELD RD SEWELL, NJ 08080-2068 |
856-589-3191 |
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8. |
WIEGAND JR, A FRANK |
3730 CLOVER PATH CT GAINESVILLE, GA 30506-4328 |
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9. |
WIEGAND, A E |
6001 DEERSPRINGS RD CICERO, NY 13039-8324 |
315-458-3064 |
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10. |
WIEGAND, A H |
1680 HENDERSONVILLE RD ASHEVILLE, NC 28803-3216 |
828-274-6848 |
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LexisNexis, a division of Reed Elsevier
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Search: |
Public Records : Surname Search |
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Terms: |
last-name(WIEGAND) maxresults(2000) |
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Date/Time: |
Tuesday, August 18, 2009 10:34 AM |
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Permissible Use: |
DPPA - Government Agency GLBA - Persons With a Legal or Beneficial Interest re Consumer |
Copyright 2009 LexisNexis, a division of Reed Elsevier Inc. All Rights Reserved.
[1] The examining attorney has only attached the front page of the surname evidence report as a representative sample of the evidence.