UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE:

 

This Office action supersedes any previous Office action issued in connection with this application.

 

Surname Refusal

Upon further review, registration is refused because the applied-for mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211.  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, 17-18, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); see TMEP §§1211, 1211.01.

The following five factors are used to determine whether a mark is primarily merelya surname:

 

(1)  Whether the surname is rare;

 

(2)  Whether anyone connected with applicant uses the term as a surname;

 

(3)  Whether the term has any recognized meaning other than as a surname;

 

(4)  Whether the term has the structure and pronunciation of a surname; and

 

(5)  Whether the term is sufficiently stylized to remove its primary significance from that of a surname.

 

See In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009); In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995); TMEP §1211.01.

 

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.  TMEP §1211.02(a); see, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., 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).

 

Please see the attached evidence from Lexis.com, establishing the surname significance of the surname MOOG.  This evidence shows the applied-for mark appearing 232 times as a surname in a nationwide telephone directory of names.

Second, the attached evidence from a Dictionary.com dictionary search shows the mark refers to William Moog, the namesake for applicant’s goods.

Similarly, see the attached evidence from applicant’s website showing the mark MOOG refers to the surname of the applicant’s company’s founder, William Moog: “Our history begins with our founder, William C. Moog – inventor, entrepreneur and visionary.” See http://www.moog.com/about/.

Finally, the mark is devoid of any stylization or other literal elements that would remove it from primarily surname significance.

Accordingly, for the above reasons, the examining attorney again that the applied-for mark is primarily merely a surname, and registration is properly refused under Section 2(e)(4).

An intent-to-use applicant who has used the same mark on related goods and/or services may file a claim of acquired distinctiveness under Trademark Act Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Nielsen Bus. Media, Inc., 93 USPQ2d 1545, 1547 (TTAB 2010); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).

 

The Trademark Trial and Appeal Board has set forth the requirements for showing that a mark in an intent-to-use application has acquired distinctiveness:

 

(1)        Applicant must establish that the same mark has acquired distinctiveness as to the other goods and/or services, by submitting evidence such as ownership of a prior registration for the same mark for related goods and/or services, a prima facie showing of acquired distinctiveness based on five years’ use of the same mark with related goods and/or services, or actual evidence of acquired distinctiveness for the same mark with respect to the other goods and/or services; and

 

(2)        Applicant must show the extent to which the goods and/or services recited in the intent-to-use application are related to the goods and/or services in connection with which the mark has acquired distinctiveness to warrant the conclusion that the previously created distinctiveness will transfer to the goods and/or services in the application upon use.  The showing necessary to establish relatedness will be decided on a case by case basis and will depend upon the nature of the goods and/or services involved and the language used to identify them in the application.

 

See Kellogg Co. v. Gen. Mills Inc., 82 USPQ2d 1766, 1771 (TTAB 2007); In re Rogers, 53 USPQ2d 1741, 1744-45 (TTAB 1999); TMEP §1212.09(a).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Applicant’s Response

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

Applicant’s response must be properly signed by (1) the individual applicant (for joint individual applicants, both must sign) or (2) someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §§2.62(b), 2.193(a), (e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01.  If applicant retains an attorney, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The individual(s) signing must personally sign or personally enter his/her electronic signature.  See 37 C.F.R. §2.193(a), (e)(2)(ii); TMEP §§611.01(b), 611.02.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  In such case, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.   There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

 

 

 

/Anthony M. Rinker/

Trademark Examining Attorney

Law Office 102

571-272-5491

anthony.rinker@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.