Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85653083 DUPONT INSIDE AN OVAL (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85653083) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Applicant has applied for registration of the mark “DUPONT” in an oval design.  The Examiner has refused registration of the subject mark on two grounds.  We address each of the grounds separately below.

I.                 REFUSAL OF REGISTRATION UNDER SECTION 2(e)(4) OF THE TRADEMARK ACT – MARK PRIMARILY MERELY A SURNAME

First of all, the Examiner has refused registration on the ground that 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.   

 While we would maintain that there is more than ample evidence to establish the fact that the name “DUPONT” has acquired substantial secondary meaning in the 210 years of the Applicant company’s existence, we need not pursue that course because, as the Examiner has pointed out in the Office Action, there is a simpler course available.

As noted by the Examiner, a mark which would otherwise be deemed primarily a surname may be registered on the Principal Register under Section 2(f) of the Trademark Act by satisfying one or more of certain conditions, including the following condition:

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.  

Accordingly, we note that the Applicant already owns 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.   

Therefore, the Applicant submits that the subject mark has become distinctive, under Section 2(f) of the Trademark Act, of the goods 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).

II.                           SPECIMEN OF USE FOR CLASS 1 GOODS UNACCEPTABLE – REGISTRATION REFUSED UNDER SECTIONS 1 AND 45 OF THE TRADEMARK ACT

The Examiner has refused registration on the additional ground that the specimen submitted by the Applicant is not acceptable because “it does not show the applied-for mark used in connection with any of the Class 1 goods specified in the application.”  The Examiner noted that “…an application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services.  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).” 

The Examiner further explained this basis for refusal as follows:

 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.

 Accordingly, in response to this Office Action, the Applicant has attached a substitute specimen showing the mark in use in commerce for the Class 1 goods specified in the application.  In conjunction with the new specimen, the Applicant has provided the Affidavit of Earl W. MacFarlane (Exhibit B) attesting to the fact that the substitute specimen was in use in commerce at least as early as the filing date of the application.

Finally, we would note that the substitute specimen provided as Exhibit A hereto is the same specimen used to secure U.S. Registration No. 3741509 for the mark “DUPONT” in standard character form, mentioned above in Section I of this Response.

In view of the foregoing, it is respectfully requested that the refusal of the registration be withdrawn and Applicant’s mark passed on to publication at the earliest possible date.

EVIDENCE
Evidence in the nature of Exhibit A - specimen Exhibit B - Affidavit has been attached.
Original PDF file:
evi_52129847-141059086_._EXHIBIT_A_-_StoneTech_Professional_Care_Products.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_52129847-141059086_._Exhibit_B_DUPONT_OVAL_US_85653083_AFFIDAVIT_OF_EWM_20130325.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 001 for PROTECTIVE SEALANT FOR PROTECTION AGAINST STAIN, NAMELY, STAIN REPELLENTS FOR USE ON STONE AND TILE
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2007 and first used in commerce at least as early as 01/00/2007 , and is now in use in such commerce.

Proposed: Class 001 for PROTECTIVE SEALANT FOR PROTECTION AGAINST STAIN, NAMELY, STAIN REPELLENTS FOR USE ON STONE AND TILE
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2007 and first used in commerce at least as early as 01/00/2007 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 001 . The specimen(s) submitted consists of DuPont? StoneTech® webpage .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-1-52129847-141059086_._DuPont_Stonetech__webpage.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
E. I. DU PONT DE NEMOURS AND COMPANY
E. I. DU PONT DE NEMOURS AND COMPANY
1007 MARKET ST
WILMINGTON
Delaware (DE)
US
19898-0001

Proposed:
E. I. DU PONT DE NEMOURS AND COMPANY of E. I. DU PONT DE NEMOURS AND COMPANY, having an address of
1007 MARKET ST WILMINGTON, Delaware 19898-0001
United States
dupont.trademarks@dupont.com
302-992-5830
302-351-8771



SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /EARL W. MACFARLANE /      Date: 03/25/2013
Signatory's Name: Earl W. MacFarlane
Signatory's Position: Corporate Counsel
Signatory's Phone Number: 302-992-4260


Response Signature
Signature: /EARL W. MACFARLANE/     Date: 03/25/2013
Signatory's Name: Earl W. MacFarlane
Signatory's Position: Corporate Counsel

Signatory's Phone Number: 302-992-4260

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    E. I. DU PONT DE NEMOURS AND COMPANY
   E. I. DU PONT DE NEMOURS AND COMPANY
   1007 MARKET ST
   WILMINGTON, Delaware 19898-0001
        
Serial Number: 85653083
Internet Transmission Date: Mon Mar 25 16:21:07 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XXX.X.XX-201303251621072392
07-85653083-50014583d9558b5f6c12aace4aee
256b45e6915f94e549aafa2ea630daf91bb6e-N/
A-N/A-20130325141059086890