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. 85772059 REMINGTON(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85772059) has been amended as follows:

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

Surname Refusal

 

The Examining Attorney has refused registration of Applicant’s REMINGTON mark (“Applicant’s Mark”) on the grounds that the word “REMINGTON” in Applicant’s Mark is primarily merely a surname under 15 U.S.C. §1052(e)(4).  As explained in detail below, Applicant submits Applicant’s Mark has acquired distinctiveness and is eligible for registration on the Principal Register under Section 2(f). 

 

Applicant is the owner of several registrations for the mark REMINGTON for goods associated with outdoor activities.  All of these marks are registered on the Principal Register, and through their long and extensive use, have acquired substantial secondary meaning.   The table below summarizes a number of these registrations. 

 

Mark	Goods/Services	Reg. No.	Date of Registration
REMINGTON	Clay pigeons	330,832	December 17, 1935
REMINGTON	Firearms and ammunition; namely shotguns and parts thereof, rifles and parts thereof, metallic cartridges, shotshells, empty metallic shells, empty shotshells, blank cartridges, caps, primers, wads and bullets.	745,041	February 12, 1963
REMINGTON	Gun locks	2,019,103	November 26, 1996
REMINGTON	Hiking and sporting goods; namely hikers’ backpacks and hunters’ camouflage all-purpose tote bags	1,843,652	July 5, 1994
REMINGTON	Hunting equipment, namely, tree stands, climbing stands, climbing sticks, ladders and platforms	2,377,947	August 15, 2000
REMINGTON	Air guns, namely BB guns and pellet guns; and ammunition therefor.	2,872,763	August 10, 2004
REMINGTON (Stylized)	Firearms and ammunition, namely shotguns and parts thereof, rifles and parts thereof, metallic cartridges, shotshells, empty metallic shells, empty shotshells, blank cartridges, caps, primers, wads and bullets.	1,027,328	December 16, 1975
REMINGTON (Stylized)	Firearms, particularly military and sporting rifles, shotguns, pistols, and parts thereof, metallic cartridges, metallic shot shells, paper shot shells, empty metallic and paper shells, blank cartridges, caps, primers, wads, shots and bullets.	187,871	August 12, 1924
REMINGTON (Stylized)	Air guns, namely BB guns and pellet guns; and ammunition therefor.	2,872,762	August 10, 2004

(TESS Printouts for these registrations are attached as Exhibit A).

 

Applicant (and its predecessors-in-interest) has been selling products under the REMINGTON brand name for over a century, and has registered the mark REMINGTON in the United States and around the world for use on or in connection with its goods.  Through such long use, Applicant’s REMINGTON trademark has become well known throughout the country and around the world, and its firearms, ammunition, clothing, sporting goods, accessories and other products are widely distributed and used throughout the United States.  The mark REMINGTON was first used by Applicant’s predecessors in interest in connection with firearms at least as early as 1852, and on ammunition at least as early as 1910.  In 1906, Applicant applied for registration of the mark REMINGTON for use on shotguns, rifles, and pistols.  The mark in the 1906 application was registered (U.S. Reg. No. 60,248) and is presently in use and owned by Applicant. 

 

Because the REMINGTON marks have been used for so long in connection with ammunition, firearms and related goods, consumers have come to expect that all such goods bearing the REMINGTON brand come from the same source.  In this case, Applicant has applied to register its REMINGTON mark for use in connection with goods associated with outdoor activities.  Consumers will certainly know that REMINGTON branded goods come from the same source that has been producing REMINGTON brand goods associated with outdoor sporting activities for decades. 

 

According to Section 1212 of the TMEP, one of the three basic types of evidence that may be used to establish acquired distinctiveness under Section 2(f) is a claim of ownership of one or more prior registrations on the Principal Register of the same mark for goods or services that are the same as or related to those named in the pending application (See 37 C.F.R. §2.41(b); T.M.E.P. §§1212.04 et seq; T.M.E.P. § 1212.09 (an intent-to-use applicant may establish acquired distinctiveness by showing that distinctiveness of mark in prior registrations will transfer to the related goods in intent-to-use application)).  Applicant satisfies this test.  Notably, the Trademark Office recently acknowledged that Applicant’s Mark satisfies this test in its allowance of Applicant’s companion application, Ser. No. 85/427,997 for the same mark for goods associated with outdoor activities in Classes 20, 22 and 28 (TESS record for App. Ser. No. 85/427,997 attached as Exhibit B).  Accordingly, Applicant submits the following claim of acquired distinctiveness:

 

The word REMINGTON in the mark has become distinctive of the goods as evidenced by ownership of U.S. Registration No(s). 187,871; 745,041; 1,843,652 and 2,377,947, and others, on the Principal Register for the same mark for related goods or services.

 

Based on the foregoing, Applicant submits that the application is now ready for publication, which action is respectfully requested. 

EVIDENCE
Evidence in the nature of exhibits to response. has been attached.
Original PDF file:
evi_74202224200-131205181_._REMINGTON_-_Exhibit_A_-_20___22.pdf
Converted PDF file(s) ( 19 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Original PDF file:
evi_74202224200-131205181_._REMINGTON_-_Exhibit_B_-_20___22.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
REMINGTON has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). 0187871, 0745041, 1843652, and 2377947, and others.


SIGNATURE(S)
Response Signature
Signature: /Randy Springer/     Date: 06/21/2013
Signatory's Name: Randel S. Springer
Signatory's Position: Attorney of Record, NC Bar Member

Signatory's Phone Number: (336) 721-3747

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: 85772059
Internet Transmission Date: Fri Jun 21 10:43:19 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201306211043193
76614-85772059-500499d77c993937739e1d1e1
ad76f612915a83ddf22d93d751920e5aabde4a76
6-N/A-N/A-20130620131205181716