| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86651083 |
| LAW OFFICE ASSIGNED | LAW OFFICE 118 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86651083/mark.png |
| LITERAL ELEMENT | OLIN |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
In response to the Final Office Action of May 5, 2016, Applicant respectfully requests that the Examiner reconsider the refusal of registration of the trademark OLIN so that an appeal is not necessary. Applicant is submitting herewith a revised Declaration of John McIntosh.
To support a rejection under 1052(e)(4), the USPTO has the burden of establishing that the term OLIN is primarily merely a surname. Applicant respectfully submits that the Office has not adequately established that OLIN is merely a surname, let alone that the primary significance to consumers is as a surname. In contrast, applicant has established that applicant and its OLIN trademark are well known to thousands of inventors, tens of thousands of investors. Furthermore, applicant has established that the term OLIN is presumed to have acquired secondary meaning for most of the goods for which applicant seeks registrations by virtue of more than ten years of use of the mark in commerce, and that the remaining goods for which registration is sought are so closely related to the goods on which OLIN has been used, that consumers would primarily perceive OLIN as a brand for these goods as well.
The Five In re Binion Factors Do Not Support a Finding that OLIN is Primarily Merely a Surname
Olin is a rare surname. The Office Action identifies 7552 possible instances of Olin as a surname. Even assuming the absence of duplicates and deceased people, in a country of approximately 325 million (see http://www.census.gov/popclock/), this is 0.0002% or 1 in 43,000. According to the National Weather Service you are three times more likely to be struck by lightning 1 in 13,000 than have the surname Olin. (http://www.lightningsafety.noaa.gov/odds.shtml). The surname OLIN is rare.
No one in upper management of applicant uses the surname OLIN. See http://www.reuters.com/finance/stocks/companyOfficers?symbol=OLN.
The term OLIN has a recognized meaning as a trademark. OLIN has been registered multiple times by the USPTO, and thus is presumed to be distinctive of the goods for which it is registered. See, Reg. Nos. 659503 and 3414111. The mark OLIN has also been registered to a third party without proof of secondary meaning, See, e.g., Reg. No. 4697661 on OLIN for paper products in Class 16. OLIN is a nationally ranked business school at Washington University (see http://olin.wustl.edu/EN-US/Pages/default.aspx), and the name of a well known engineering school in the northeast (see http://www.olin.edu/) lso the well-know
OLIN does not have a structure or pronunciation that is more like a surname than a trademark. In fact, based upon Census data, OLIN is unusually short for a surname. Most surnames (90%) are longer than 4 characters. See http://www.quora.com/What-is-the-average-length-of-last-names-in-the-United-States. Thus OLIN does not particularly resemble a surname,
Finally the last factor, whether the mark is stylized is neutral in this case. 54% of all registered trademarks (1162345/2154303) make a standard character claim. Thus, while presenting the mark in a stylized manner would conclusively show that a mark is not primarily, merely a surname, the majority of marks, including OLIN in this application, are presented in standard characters.
Applicant’s Showing of the Fame and Distinctiveness of OLIN
Applicant’s evidence of distinctiveness of OLIN. Olin is presenting a supplemented Declaration of John McIntosh, Executive Vice President of applicant.
Mr. McIntosh establishes that applicant is a well-known company that has been traded on New York Stock exchange since 1917. McIntosh Declaration, ¶2. Olin’s current stock symbol is OLN. McIntosh Declaration, ¶2. Olin is a member of the Famous Fortune 1000. McIntosh Declaration, ¶2.
Olin has approximately 4500 shareholders. McIntosh Declaration, ¶3.
Olin has approximately 6200 employees. McIntosh Declaration, ¶4. In other words you are about as likely to work for Olin as be named Olin.
Olin has been using the trademark OLIN for nearly fifty years. McIntosh Declaration, ¶5. Last year alone this amounted to $2.8 billion dollars worth of products. McIntosh Declaration, ¶7. The majority of these sales are of chemical products of the type for which Olin is trying to register the mark OLIN. McIntosh Declaration, ¶8. In fact, Olin is the leading producer in the world of many of these products. McIntosh Declaration, ¶10.
Olin has been selling hydrochloric acid; potassium hydroxide; sodium hydroxide; sodium hypochlorite; hydrogen; sodium chloride (the “Historic Products”) in connection with the OLIN trademark for at least the five years preceding this application. McIntosh Declaration, ¶11. As a result of this use on the Historic Products, OLIN is presumed to have become distinctive of applicant pursuant to 15 USC §1052(f). Moreover, as a result of a merger that made national news, Olin has been, or soon will be, used connection with on the remaining goods list in the application, namely, sulfuric acid; ethylene dichloride; vinyl chloride monomer; acetone; cumene; phenol; allyl chloride; epichlorohydrin; bisphenol A; unprocessed synthetic novolac resins; unprocessed epoxy resins, including unprocessed liquid epoxy resins and unprocessed advanced epoxy resins; unprocessed epoxy novolac resins; amine-based hardeners, namely, chemical additives for resins; polyphenolic-based hardeners, namely, chemical additives for resins; chlorinated hydrocarbons; chemical products, namely chemicals for industrial purposes; unprocessed synthetic resins; chlorinated organic chemicals for use in industry; chlorinated inorganic chemicals for use in industry, and chemical preparations, namely, chlorinated solvents for industrial and commercial use, and semi-processed synthetic novolac resins; semi-processed epoxy resins including semi-processed liquid epoxy resins and semi-processed advanced epoxy resins; semi-processed epoxy novolac resins; semi-processed synthetic resins (the “Expanded Products”). McIntosh Declaration, ¶15. These Expanded Products are closely related to the Historic Products on which applicant has actually used the mark OLIN, and because of this close relationship and applicant’s long use of OLIN in connection with chemicals generally, and the Historic Products specifically, consumers are likely to associate the use OLIN on the expanded products, with the use of OLIN on the Historic Products, and with applicant. McIntosh Declaration, ¶¶16, 19.
Response to Office Action’s Incorrect Assertions are Unpersuasive and Unsupported
The Final Office Action contains several errors: First, the Office Action states that applicant provided “no evidence whatsoever.” Apparently the Final Action was issued without proper consideration of the Declaration submitted with applicant’s response and referenced repeatedly in that response (although there is some reference to the Declaration later in the Office Action. Second, the Office Action fails to give weight to applicant’s prior registrations on OLIN. Even if these registrations issued under Section 2(f), the fact that they issued is proof that they had in fact acquired distinctive – in other words the term OLIN was no longer perceived as primarily merely a surname. Third, the Office Action ignored that the prior declaration (Paragraph 6) established more than five years of use of the mark in connection with several of the listed goods, sufficient to qualify for the presumption of acquired distinctiveness under §2(f), and that the prior declaration (Paragraph 8) established that remaining goods in the application are so closely related to the goods on which OLIN has been used, that OLIN used in connection with these goods would not be regarded as merely a surname..
CONCLUSION The issue in this application is: Does the USPTO’s showing that at most 1 in 43,000 Americans has the surname Olin establish that the primary significance of OLIN encountered by a consumer on any of chemicals listed in the application some guy’s last name? Or is the primary significance as a trademark of Olin Corporation, a publicly traded chemical company with thousands of employees and shareholders, billions of dollars of sales, and decades of use of OLIN as a trademark on chemicals? Applicant respectfully submits that OLIN on chemicals will be perceived as a trademark of Olin Corporation, and not merely some guy’s last name. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_6325422234-20161105213752218407_._20161102-Executed-Declaration-of-John-L-McIntosh.PDF |
| CONVERTED PDF FILE(S) (5 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\866\510\86651083\xml1\RFR0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\866\510\86651083\xml1\RFR0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\866\510\86651083\xml1\RFR0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\866\510\86651083\xml1\RFR0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\866\510\86651083\xml1\RFR0006.JPG | |
| DESCRIPTION OF EVIDENCE FILE | An updated declaration of John L. McIntosh. |
| GOODS AND/OR SERVICES SECTION (001)(current) | |
| INTERNATIONAL CLASS | 001 |
| DESCRIPTION | |
| Chlorine; hydrochloric acid; potassium hydroxide; sodium hydroxide; sodium hypochlorite; hydrogen; sodium chloride; sulfuric acid; ethylene dichloride; vinyl chloride monomer; acetone; cumene; phenol; allyl chloride; epichlorohydrin; bisphenol A; unprocessed synthetic novolac resins; unprocessed epoxy resins, including unprocessed liquid epoxy resins and unprocessed advanced epoxy resins; unprocessed epoxy novolac resins; amine-based hardeners, namely, chemical additives for resins; polyphenolic-based hardeners, namely, chemical additives for resins; chlorinated hydrocarbons; chemical products, namely chemicals for industrial purposes; unprocessed synthetic resins; chlorinated organic chemicals for use in industry; chlorinated inorganic chemicals for use in industry, and chemical preparations, namely, chlorinated solvents for industrial and commercial use | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (001)(proposed) | |
| INTERNATIONAL CLASS | 001 |
| TRACKED TEXT DESCRIPTION | |
| Chlorine; hydrochloric acid; potassium hydroxide;
sodium hydroxide; sodium hypochlorite; hydrogen; sodium chloride; sulfuric
acid; ethylene dichloride; vinyl chloride monomer; acetone; cumene; phenol; allyl chloride; epichlorohydrin; bisphenol A; unprocessed synthetic novolac
resins; unprocessed epoxy resins, including unprocessed liquid epoxy resins and unprocessed advanced epoxy resins; unprocessed epoxy novolac
resins; amine-based hardeners, namely, chemical additives for resins; polyphenolic-based hardeners, namely, chemical additives for resins;
chlorinated hydrocarbons; |
|
| FINAL DESCRIPTION | |
| Chlorine; hydrochloric acid; potassium hydroxide; sodium hydroxide; sodium hypochlorite; hydrogen; sodium chloride; sulfuric acid; ethylene dichloride; vinyl chloride monomer; acetone; cumene; phenol; allyl chloride; epichlorohydrin; bisphenol A; unprocessed synthetic novolac resins; unprocessed epoxy resins, including unprocessed liquid epoxy resins and unprocessed advanced epoxy resins; unprocessed epoxy novolac resins; amine-based hardeners, namely, chemical additives for resins; polyphenolic-based hardeners, namely, chemical additives for resins; chlorinated hydrocarbons; chemical products, namely, chemicals for industrial purposes; unprocessed synthetic resins; chlorinated organic chemicals for use in industry; chlorinated inorganic chemicals for use in industry, and chemical preparations, namely, chlorinated solvents for industrial and commercial use | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (017)(no change) | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Bryan K. Wheelock/ |
| SIGNATORY'S NAME | Bryan K. Wheelock |
| SIGNATORY'S POSITION | Attorney, Member Missouri Bar |
| SIGNATORY'S PHONE NUMBER | (314) 726-7505 |
| DATE SIGNED | 11/05/2016 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Sat Nov 05 22:12:17 EDT 2016 |
| TEAS STAMP | USPTO/RFR-XX.XXX.XXX.XX-2 0161105221217050441-86651 083-5705a6e7bb1a892e00a1e b1d5fd0d75cb5bcce01dd5b47 9d46dbf79915c544dc-N/A-N/ A-20161105213752218407 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
In response to the Final Office Action of May 5, 2016, Applicant respectfully requests that the Examiner reconsider the refusal of registration of the trademark OLIN so that an appeal is not necessary.
Applicant is submitting herewith a revised Declaration of John McIntosh.
To support a rejection under 1052(e)(4), the USPTO has the burden of establishing that the term OLIN is primarily merely a surname. Applicant respectfully submits that the Office has not adequately established that OLIN is merely a surname, let alone that the primary significance to consumers is as a surname. In contrast, applicant has established that applicant and its OLIN trademark are well known to thousands of inventors, tens of thousands of investors. Furthermore, applicant has established that the term OLIN is presumed to have acquired secondary meaning for most of the goods for which applicant seeks registrations by virtue of more than ten years of use of the mark in commerce, and that the remaining goods for which registration is sought are so closely related to the goods on which OLIN has been used, that consumers would primarily perceive OLIN as a brand for these goods as well.
The Five In re Binion Factors Do Not Support a Finding that OLIN is Primarily Merely a Surname
Olin is a rare surname. The Office Action identifies 7552 possible instances of Olin as a surname. Even assuming the absence of duplicates and deceased people, in a country of approximately 325 million (see http://www.census.gov/popclock/), this is 0.0002% or 1 in 43,000. According to the National Weather Service you are three times more likely to be struck by lightning 1 in 13,000 than have the surname Olin. (http://www.lightningsafety.noaa.gov/odds.shtml). The surname OLIN is rare.
No one in upper management of applicant uses the surname OLIN. See http://www.reuters.com/finance/stocks/companyOfficers?symbol=OLN.
The term OLIN has a recognized meaning as a trademark. OLIN has been registered multiple times by the USPTO, and thus is presumed to be distinctive of the goods for which it is registered. See, Reg. Nos. 659503 and 3414111. The mark OLIN has also been registered to a third party without proof of secondary meaning, See, e.g., Reg. No. 4697661 on OLIN for paper products in Class 16. OLIN is a nationally ranked business school at Washington University (see http://olin.wustl.edu/EN-US/Pages/default.aspx), and the name of a well known engineering school in the northeast (see http://www.olin.edu/)
lso the well-know
OLIN does not have a structure or pronunciation that is more like a surname than a trademark. In fact, based upon Census data, OLIN is unusually short for a surname. Most surnames (90%) are longer than 4 characters. See http://www.quora.com/What-is-the-average-length-of-last-names-in-the-United-States. Thus OLIN does not particularly resemble a surname,
Finally the last factor, whether the mark is stylized is neutral in this case. 54% of all registered trademarks (1162345/2154303) make a standard character claim. Thus, while presenting the mark in a stylized manner would conclusively show that a mark is not primarily, merely a surname, the majority of marks, including OLIN in this application, are presented in standard characters.
Applicant’s Showing of the Fame and Distinctiveness of OLIN
Applicant’s evidence of distinctiveness of OLIN. Olin is presenting a supplemented Declaration of John McIntosh, Executive Vice President of applicant.
Mr. McIntosh establishes that applicant is a well-known company that has been traded on New York Stock exchange since 1917. McIntosh Declaration, ¶2. Olin’s current stock symbol is OLN. McIntosh Declaration, ¶2. Olin is a member of the Famous Fortune 1000. McIntosh Declaration, ¶2.
Olin has approximately 4500 shareholders. McIntosh Declaration, ¶3.
Olin has approximately 6200 employees. McIntosh Declaration, ¶4. In other words you are about as likely to work for Olin as be named Olin.
Olin has been using the trademark OLIN for nearly fifty years. McIntosh Declaration, ¶5. Last year alone this amounted to $2.8 billion dollars worth of products. McIntosh Declaration, ¶7. The majority of these sales are of chemical products of the type for which Olin is trying to register the mark OLIN. McIntosh Declaration, ¶8. In fact, Olin is the leading producer in the world of many of these products. McIntosh Declaration, ¶10.
Olin has been selling hydrochloric acid; potassium hydroxide; sodium hydroxide; sodium hypochlorite; hydrogen; sodium chloride (the “Historic Products”) in connection with the OLIN trademark for at least the five years preceding this application. McIntosh Declaration, ¶11. As a result of this use on the Historic Products, OLIN is presumed to have become distinctive of applicant pursuant to 15 USC §1052(f). Moreover, as a result of a merger that made national news, Olin has been, or soon will be, used connection with on the remaining goods list in the application, namely, sulfuric acid; ethylene dichloride; vinyl chloride monomer; acetone; cumene; phenol; allyl chloride; epichlorohydrin; bisphenol A; unprocessed synthetic novolac resins; unprocessed epoxy resins, including unprocessed liquid epoxy resins and unprocessed advanced epoxy resins; unprocessed epoxy novolac resins; amine-based hardeners, namely, chemical additives for resins; polyphenolic-based hardeners, namely, chemical additives for resins; chlorinated hydrocarbons; chemical products, namely chemicals for industrial purposes; unprocessed synthetic resins; chlorinated organic chemicals for use in industry; chlorinated inorganic chemicals for use in industry, and chemical preparations, namely, chlorinated solvents for industrial and commercial use, and semi-processed synthetic novolac resins; semi-processed epoxy resins including semi-processed liquid epoxy resins and semi-processed advanced epoxy resins; semi-processed epoxy novolac resins; semi-processed synthetic resins (the “Expanded Products”). McIntosh Declaration, ¶15. These Expanded Products are closely related to the Historic Products on which applicant has actually used the mark OLIN, and because of this close relationship and applicant’s long use of OLIN in connection with chemicals generally, and the Historic Products specifically, consumers are likely to associate the use OLIN on the expanded products, with the use of OLIN on the Historic Products, and with applicant. McIntosh Declaration, ¶¶16, 19.
Response to Office Action’s Incorrect Assertions are Unpersuasive and Unsupported
The Final Office Action contains several errors: First, the Office Action states that applicant provided “no evidence whatsoever.” Apparently the Final Action was issued without proper consideration of the Declaration submitted with applicant’s response and referenced repeatedly in that response (although there is some reference to the Declaration later in the Office Action. Second, the Office Action fails to give weight to applicant’s prior registrations on OLIN. Even if these registrations issued under Section 2(f), the fact that they issued is proof that they had in fact acquired distinctive – in other words the term OLIN was no longer perceived as primarily merely a surname. Third, the Office Action ignored that the prior declaration (Paragraph 6) established more than five years of use of the mark in connection with several of the listed goods, sufficient to qualify for the presumption of acquired distinctiveness under §2(f), and that the prior declaration (Paragraph 8) established that remaining goods in the application are so closely related to the goods on which OLIN has been used, that OLIN used in connection with these goods would not be regarded as merely a surname..
CONCLUSION
The issue in this application is: Does the USPTO’s showing that at most 1 in 43,000 Americans has the surname Olin establish that the primary significance of OLIN encountered by a consumer on any of chemicals listed in the application some guy’s last name? Or is the primary significance as a trademark of Olin Corporation, a publicly traded chemical company with thousands of employees and shareholders, billions of dollars of sales, and decades of use of OLIN as a trademark on chemicals? Applicant respectfully submits that OLIN on chemicals will be perceived as a trademark of Olin Corporation, and not merely some guy’s last name.
