To: | E. I. du Pont de Nemours and Company (dupont.trademarks@usa.dupont.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85653083 - DUPONT INSIDE AN OVAL - N/A |
Sent: | 9/29/2012 10:05:06 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85653083
MARK: DUPONT INSIDE AN OVAL
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CORRESPONDENT ADDRESS: E. I. DU PONT DE NEMOURS AND COMPANY |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: E. I. du Pont de Nemours and Company
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 9/29/2012
I. REFUSAL OF REGISTRATION UNDER SECTION 2(e)(4) OF THE TRADEMARK ACT – MARK PRIMARILY MERELY A SURNAME
Applicant has applied for registration of the mark DUPONT in an oval design.
Please see the attached evidence from whitepages.com, establishing the surname significance of the surname “DUPONT.” This evidence shows the applied-for mark appearing over 100 times as a surname in a nationwide telephone directory of names.
(1) Submit 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, 1212.04. Applicant has already claimed ownership of U.S. Registration No. 3741509 for the mark DUPONT in standard character form, for the identical goods as those identified in the present application. It is noted that Registration No. 3741509 is itself registered pursuant to Section 2(f) of the Trademark Act. 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). 3741509 on the Principal Register for the same mark for the same or related goods.” TMEP §1212.04(e).;
(2) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “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); see 37 C.F.R. §2.193(e)(1).; or
(3) Submit 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 and/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 and/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.
If applicant cannot satisfy one of the above, applicant can amend the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a).
Applicant must respond to the additional refusal/requirement(s) set forth below.
II. SPECIMEN OF USE FOR CLASS 1 GOODS UNACCEPTABLE – REGISTRATION REFUSED UNDER SECTIONS 1 AND 45 OF THE TRADEMARK ACT
The Class 1 identification of goods reads as follows: “PROTECTIVE SEALANT FOR PROTECTION AGAINST STAIN, NAMELY, STAIN REPELLENTS FOR USE ON STONE AND TILE.” In this case, the specimen shows use of the mark on the Class 17 sealer, but does not show use of the mark on the Class 1 sealers, namely, stain repellents. [It is noted that the specimen for the Class 17 goods is the identical product, sealer, as submitted for the Class 1 goods.]
Therefore, applicant must submit the following:
(1) A substitute specimen showing the mark in use in commerce for Class 1 goods specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual identified goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods listed in International Class 1 in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark for the identified goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
SEARCH RESULTS
/Martha Santomartino/
Martha Santomartino
Trademark Examining Attorney
Law Office 112
(571) 272-9416
Martha.Santomartino@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.