Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 85811065 REMINGTON(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85811065) 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’s related company, RA Brands, LLC, is the owner of numerous registrations for the mark REMINGTON for goods of all kinds.  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	Toy trucks and banks.	2,029,536	January 14, 1997
REMINGTON	Belt buckles not of precious metal for clothing; award and decorative cloth patches.	2,282,454	October 5, 1999
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, 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)	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)	Metal safes.	2,012,463	October 29, 1996
REMINGTON (Stylized)	Decoys for hunting, namely bird decoys; animal scent lures; hunting game calls.	2,792,880	December 9, 2003
REMINGTON (Stylized)	Air guns, namely BB guns and pellet guns; and ammunition therefor.	2,872,762	August 10, 2004
REMINGTON (Stylized)	Jerky	3,339,403	November 20, 2007
REMINGTON (Stylized)	Video game discs on the subject of hunting, wildlife and outdoor activities.	4,086,621	January 17, 2012

 

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

 

            Applicant’s related company RA Brands, LLC (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. 

 

            Because the REMINGTON marks have been used for so long in connection with ammunition, firearms, clothing, sporting goods, accessories and other products, 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 “readi-shovels and axes for hunters, hikers, campers and others engaged in outdoor sporting activities; multi-function hand tools for hunters, hikers, campers and others engaged in outdoor sporting activities comprised of knives and one or more of shears, gut hooks, saws, wrenches, screwdrivers, and rulers”.  Consumers will certainly know that REMINGTON branded goods come from the same source that has been producing the myriad 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, albeit the registrations are owned by Applicant’s related company, RA Brands, LLC.  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 2,029,536, and others, by Applicant’s related company RA Brands, LLC, 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 Exhibit A to the response. has been attached.
Original PDF file:
evi_1749882193-192213441_._Exhibit_A__056.pdf
Converted PDF file(s) ( 31 pages)
Evidence-1
Evidence-2
Evidence-3
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Evidence-31

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, 2029536 and others.


SIGNATURE(S)
Response Signature
Signature: /Randy Springer/     Date: 09/10/2013
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: 85811065
Internet Transmission Date: Tue Sep 10 20:58:27 EDT 2013
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2013091020582762
5520-85811065-500ded9aced49eb8c81b48bd2b
81c1bc81f49a89ff574b4fb5753a16cdad0f9e5c
2-N/A-N/A-20130910192213441059