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. 85654904 CHAUM(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85654904) has been amended as follows:

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

In response to Office Action of 10/9/2012, please consider following remarks and arguments in support of granting approval of the mark and registration on the Principal Register.

 

I.                   The Mark is Not Primarily Merely a Surname

The Examining Attorney has refused to register this applied-for mark CHAUM on the grounds that the mark is primarily merely a surname under Trademark Act Section 2(e)(4).  Applicant respectfully submits that the mark is perceived as a coined term and not as a surname, as discussed below.

A.                Applicant’s CHAUM Mark is Coined and Fanciful

CHAUM is a coined, inherently distinctive, mark.  The mark is a combination of “Cha” for Dr. Kwang Yul Cha, a founder of Applicant, and “um,” which means resting or relaxing in Korean, intended to evoke the effects of Applicant’s spa and health services.  The “um” portion of the mark was also chosen because it corresponds with the “ummmmm” sound one might make when meditating.  The mark, which is correctly pronounced in two syllables as “cha-um,”  has a similarly pronounced and sounded last syllable as the words “stadium” and “gymnasium,” and evokes a place associated with fitness or health. 

B.                 The Mark is Not Likely to Be Perceived as a Surname

The question of whether a mark is primarily merely a surname depends on the mark’s primary significance to the purchasing public.  See Ex Parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pats. 1995); TMEP §§1211, 1211.01.  In this case, it is unlikely that the public would perceive CHAUM to be a surname because the surname is rare, it does not have the “look and feel” of a surname, and the mark as a whole is not a surname connected with Applicant. 

1.         “Chaum” is a Rare Surname

If a surname is rare, purchasers are not likely to regard the surname as primary significance because they probably have never encountered the surname.  Instead, the public will perceive the term as a trademark.  The Examining Attorney has presented evidence from the website Ancestry.com that there are a total of 242 references to Chaum as a surname, including 108 census and voter list references to the name “Chaum.” While this shows that there have been occurrances of CHAUM as a surname, it also shows that it is exceedingly rare.  The references on Ancestry.com are cumulative and appear to cover over 150 years of history.  Attached as Attachment No. 1 is a printout of a breakdown of the sources of the census and voter list references.  They date back to 1820 and, in addition to US data, also include census information from Canada and England, which is not relevant to the question of the perception of US consumers. 

Given the breadth of coverage of this database, the fact that there are just a little more than 100 references to Chaum as a surname is in itself evidence that it is rare.  In fact, to put this number in perspective, Applicant searched for occurrences in the Ancestry.com database of KODAK, which is universally considered an example of a strong, coined, mark.  There are 1,912 references in Ancestry.com, including 715 census and voter list references.  See printout attached as Attachment No. 2.  This is seven times the number of references for CHAUM.   

Moreover, a search of the 2000 U.S. Census report reveals that there are fewer than 100 people with the surname Chaum. See printout attached as Attachment No. 3 showing that Chaum does not appear on the list of surnames occurring 100 or more times. This indicates that the surname is still exceedingly rare. 

2.         CHAUM Does Not Have the “Look And Feel” of a Surname

Certain surnames are so rare that they do not even have the appearance of surnames.  In such cases, a reasonable application of the “primary significance to the purchasing public” test could result in a finding that the surname, when used as a mark, would be perceived as arbitrary or fanciful.”  See In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (HACKLER does not have the look and feel of a surname); See also In re Joint-Stock Co., 84 USPQ2d 1921 (TTAB 2007) (lack of other recognized meaning does not in itself imbue a mark with the “look and feel” of a surname). 

For example, KODAK, though a coined mark, also is a surname, though exceedingly rare. Like KODAK, CHAUM, which is even rarer, is unlikely to be perceived as a surname. 

CHAUM is not a generally recognized surname. As such the purchasing public is likely to find the mark arbitrary or fanciful.  One can easily surmise if a word is a surname based on its ending, such as “er,” “man,” “elli,” which are common surname suffixes.  See In re Pirelli, 9 USPQ2d 1564, 1566 (TTAM 1988).  Chaum does not have a traditionally surname suffix and thus would not be viewed as a surname. 

3.         CHAUM Has No Connection to Applicant

No one associated with Applicant uses CHAUM as a surname, which further supports the likely perception by consumers that the mark is coined and not a surname. 

4.          Any Doubt Should Be Resolved In Favor of Applicant

Lastly, to the extent that there is any doubt on the question of whether CHAUM would be perceived as primarily merely a surname, that doubt should be resolved in favor of the Applicant.  See In re United Distillers PLC, 56 USPQ2d 1220, 1222 (TTAB 2000).

II.                Amendment of Basis

With this response, Applicant respectfully requests amendment of the filing basis from Section 1(b) to Section 44(e) of the Trademark Act.  Applicant has submitted herewith a copy of the priority Korean Registration No. 41-0218420 and a signed English translation thereof. 

                    CONCLUSION

For the above reasons, Applicant respectfully submits that the mark CHAUM is not primarily merely a surname and respectfully requests that refusal to the register on the Principal Register be reconsidered and withdrawn.  Applicant submits that the application is in condition for publication and requests same. 

 

EVIDENCE
Evidence in the nature of Attachment No. 1: Printout from Acestry.com on April 3, 2013 showing a breakdown of the sources of the census and voter list references. Attachment No. 2: Printout from Acestry.com on April 3, 2013 of entry for KODAK. Attachment No. 3: Printout of report of Surnames Occurring 100 or More Times From U.S. Census Report. has been attached.
Original PDF file:
evi_20825590221-194802931_._chaum12.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_20825590221-194802931_._chaum_kodak.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_20825590221-194802931_._chaum_excel.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 044 for Medical services; medical screening; medical consultations; medical testing for diagnostic or treatment purposes or fitness evaluation; health care services, namely, wellness programs; medical spa services, namely, minimally and non-invasive cosmetic and body fitness therapies; Health spa services for health and wellness of the body and spirit; Nutrition counseling; massage therapy services; making reservations and bookings for others for medical, physical and beauty treatments at health spas and medical clinics
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed: Class 044 for Medical services; medical screening; medical consultations; medical testing for diagnostic or treatment purposes or fitness evaluation; health care services, namely, wellness programs; medical spa services, namely, minimally and non-invasive cosmetic and body fitness therapies; Health spa services for health and wellness of the body and spirit; Nutrition counseling; massage therapy services; making reservations and bookings for others for medical, physical and beauty treatments at health spas and medical clinics
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 41-0218420 registered 10/05/2011 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-1-20825590221-170716037_._chaum_reg._cert.pdf
Converted PDF file(s) ( 6 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

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: /mjw/      Date: 04/04/2013
Signatory's Name: Marlene J. Williams
Signatory's Position: Attorney for Applicant, California Bar Member
Signatory's Phone Number: 415-984-8200


Response Signature
Signature: /mjw/     Date: 04/04/2013
Signatory's Name: Marlene J. Williams
Signatory's Position: Attorney of record, CA bar member

Signatory's Phone Number: 415 984 8200

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.

        
Serial Number: 85654904
Internet Transmission Date: Thu Apr 04 20:40:50 EDT 2013
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201304042040503
35335-85654904-500ae5fb8148c9f0902782ee6
439378ac3bd3ad0b6af1e1160147c676faed9a-N
/A-N/A-20130404130533087964