To: | EURO TOOL, INC. (TRADEMARK@STINSONLEONARD.COM) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86601808 - MILAND - 0506383- |
Sent: | 7/29/2015 7:35:53 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86601808
MARK: MILAND
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: EURO TOOL, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 7/29/2015
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
Search Clause
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Summary of Issues that Applicant Must Address
- Section 2(e)(4) Refusal – Primarily Merely a Surname
- Identification of Goods
SECTION 2(e)(4) REFUSAL – PRIMARILY MERELY A SURNAME
The applicant has applied to register the mark MILAND for “Jewelry tools; jewelry tool kits; jewelry tool parts, components and accessories.”
Please see the attached evidence from LEXIS®, establishing the surname significance of the surname MILAND. This evidence shows the applied-for mark appearing at least three hundred times as a surname in a nationwide telephone directory of names.
The following five factors are used to determine whether a mark is primarily merelya surname:
(1) Whether the surname is rare;
(2) Whether anyone connected with applicant uses the term as a surname;
(3) Whether the term has any recognized meaning other than as a surname;
(4) Whether the term has the structure and pronunciation of a surname; and
(5) Whether the term is sufficiently stylized to remove its primary significance from that of a surname.
See In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009); In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995); TMEP §1211.01.
In addition, the attached pages from Rhymezone and the LookWAYup Translating Dictionary evidence that the term MILAND is recognized as a surname and has no meaning other than that as a surname.
The term, MILAND has the structure and pronunciation of a surname. The fact that a term looks and sounds like a surname may contribute to a finding that the primary significance of the term is that of a surname. In re Giger, 78 USPQ2d 1405, 1409 (TTAB 2006); In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988); In re Petrin Corp., 231 USPQ 902, 904 (TTAB 1986); see TMEP §1211.01(a)(vi).
Moreover, the applied-for mark is not sufficiently stylized to remove its primary significance from that of a surname.
Accordingly, registration is refused under Section 2(e)(4) of the Trademark Act.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03. In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
Identification of Goods
The identification of goods is unacceptable as indefinite because it uses broad wording that could include goods in other classes. See TMEP §§1402.01, 1402.03.
For kits consisting of a group of items that share a common theme, the identification should specify the theme followed by the word “comprising” and a list of the items that make up the kit, setting forth the most dominant items first. Generally, the international class of the kit will be determined by the international class of the majority of items in the kit. For example, “nail care kits comprising nail polish, emery boards, cotton balls for cosmetic purposes and nail clippers” are in International Class 3 because this is the international class of a majority of the items (with the only item not in International Class 3 being “nail clippers,” which is in International Class 8).
If no items in a shared-theme kit are more dominant than any other item, the international class for the kit itself will be determined by the first-listed item after the wording “comprising.” For example, “baking kits comprising baking pan and cake mix” are in International Class 21 (the class for “baking pans”), and “baking kits comprising cake mix and baking pan” are in International Class 30 (the class for “cake mixes”).
For kits that make a particular product, the identification must specify the product being made using the following format: “kits for making [specify item].” Generally, the international class for this type of kit will be determined by the international class of the product being made. For example, “kits for making bird feeders” are in International Class 21 (the class for “bird feeders”), and “kits for making clocks” are in International Class 14 (the class for “clocks”).
An exception to the above guidelines is kits identified as “hobby craft kits,” which are classified in International Class 28 regardless of the items comprising the kit or the product made by the kit. An identification for these kits must either list the items in the kit after the word “comprising” (e.g., “hobby craft kits comprising wood panels, paint, paintbrushes, nails) or specify the product being made (e.g., “hobby craft kits for making bird feeders”).
Jewelry tools, namely, (specify goods by their common commercial names, e.g., Hand operated jewelry tools, namely, cutting pliers in International Class 008; ); Jewelry tool kits comprised of (specify major component parts of kits, or specify jewelry making kits in International Class 014); Jewelry tool parts, components and accessories, namely, (specify goods by their common commercial names, e.g., clasps for making jewelry in International Class 014).
See TMEP §1402.01.
PROPER CLASSIFICATION IS DEPENDANT UPON FURTHER CLASSIFICATION OF THE GOODS
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Multiple Class Requirements
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
Assistance
/AKhan/
Asmat Khan
Law Office 114
(571)-272-9453
asmat.khan@uspto.gov
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Select for Delivery or View Checked
Total number found: 314 |
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No. |
Name |
Address |
Phone |
1. |
MILAND, A SYLVESTER JR. |
1852 E GLADWICK ST |
424-296-5418 |
2. |
MILAND, ADAM |
170 N STINSON |
208-703-4938 |
3. |
MILAND, ALAN R |
1325 ROYAL OAKS DR |
608-754-5745 |
4. |
MILAND, ALISHIA |
256-340-1393 |
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5. |
MILAND, AMANDA |
COTTAGE GROVE, MN 55016 |
651-769-3476 |
6. |
MILAND, AMSEME |
755 NE 173RD TER |
305-651-7287 |
7. |
MILAND, ANGELA M |
875 NARCISSUS ST |
509-738-4065 |
8. |
MILAND, ANGELE JOHNSON |
181 MARQUEZ |
985-233-0542 |
9. |
MILAND, ANNETTE |
N49991 COUNTY ROAD Y |
715-287-4442 |
10. |
MILAND, ANNETTE CAROL |
PO BOX 136 |
256-340-0013 |
Search: |
Public Records > Surname javascript:void(0);> Search Results |
Terms: |
last-name(miland) |
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Select for Delivery or View Checked
Total number found: 314 |
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No. |
Name |
Address |
Phone |
111. |
MILAND, JANICE |
5084 BONNIE VALE CT |
715-835-4398 |
112. |
MILAND, JANICE R |
25037 LOONS LANDING RD |
218-245-1944 |
113. |
MILAND, JARRED S |
520 DEERVIEW DR SE |
507-744-3552 |
114. |
MILAND, JASON |
15 2ND S |
320-237-2755 |
115. |
MILAND, JAVLE |
24 2ND |
716-243-1350 |
116. |
MILAND, JAY E |
2502 FRYKLUND DR APT 6 |
715-231-4128 |
117. |
MILAND, JEFFREY |
7320 CURVUE |
715-271-0790 |
118. |
MILAND, JEFFREY |
EAU CLAIRE, WI 54701 |
715-271-3891 |
119. |
MILAND, JEFFREY |
EAU CLAIRE, WI 54701 |
715-559-4488 |
120. |
MILAND, JEN R |
813 3RD SE |
507-269-5463 |
Search: |
Public Records > Surname javascript:void(0);> Search Results |
Terms: |
last-name(miland) |
http://www.rhymezone.com/?loc=bar
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Online Dictionaries:
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Translation DictionaryEnglish DictionaryFrench EnglishEnglish FrenchSpanish EnglishEnglish Spanish |
Portuguese EnglishEnglish PortugueseGerman EnglishEnglish GermanDutch English English Dutch |
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1. [n] Last name, frequency rank in the U.S. is 21380 . |
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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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.