| 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 1957 (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://tmng-al.gov.uspto.report/resting2/api/img/86651083/large |
| 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) | |
|
Applicant respectfully requests reconsideration of the refusal of registration of the trademark OLIN on the grounds that it is primarily merely a surname. The Office Action states that Applicant's showing of acquired distinctiveness was unsupported. Applicant was not attempting to show acquired distinctiveness; applicant was attempting to prove that the primary significance of the mark OLIN is not a surname, but the name and brand of a major American corporation. The Office Action has at most identified 100 individual who may have the surname OLIN. In contrast, applicant established that OLIN Corporation has been an NYSE Company since 1917 (McIntosh Decl. Para. 1). That OLIN Corporation is one of the top 1000 corporations in the country (McIntosh Decl. Para. 1). Most significantly, applicant established that there 5,900 more people who work for Olin Corporation (McIntosh Decl. Para. 2) than the Office has established has are named Olin. It is far more likely that someone encountering the term OLIN will (correctly) associate it with the major American corporation, than think is it identifying someone's surname. Applicant's point is not that the term OLIN has acquired distinctiveness, but that the name and company are so well known, the primary significance to the vast majority of Americans is not as a surname, but as a company name and trademark. In the Office Action of September 16, 2015 (“Office Action”) the Examining Attorney refused registration under Section 2(e)(4) on the grounds that the mark is primarily merely a surname. This refusal was subsequently continued on March 8, 2016. Applicant submits that OLIN will not primarily be perceived as a surname by consumers and, accordingly, Applicant respectfully requests that the refusal be withdrawn and the application approved for publication.
The TTAB has listed five factors to be considered when determining whether a term is primarily merely a surname. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995). They are:
(1) “the degree of a surname’s rareness” Id. at 1333 citing In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987). (2) “whether there is “anyone connected with applicant” having the surname” Id. citing In re Monotype Corp., 14 USPQ2d 1070, 1071 (TTAB 1989). (3) “whether or not [the term] has any “recognized meaning other than that of a surname” Id. citing In re BDH Two Inc., 26 USPQ2d 1556, 1558 (TTAB 1993). (4) “whether [the term] has the “structure and pronunciation” of a surname” Id. citing In re Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988). (5) “if the stylization [is] distinctive enough” to “cause the mark not to be perceived as primarily merely a surname” Id. at 1334 citing In re Pickett Hotel Co., 229 USPQ 760, 763 (TTAB 1986).
The burden is on the examining attorney to establish a prima facie case that the term is primarily merely a surname. See In re Etablissements Darty et Fils, 225 USPQ 652, 653 (Fed. Cir. 1985). “If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of applicant.” TMEP §1211.01 citing In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); Benthin at 1334.
As evidence that OLIN will be perceived as primarily merely a surname the Examining Attorney attached a sample of the results from a search of the website 411.com showing 100 entries for “Olin.” The sample contained the first eleven entries of the search results.
The sample does not establish that the directory listings are 100 different people, without duplication or error. Even if it were true that 100 people in the U.S. had the last name “Olin,” the surname should still be considered rare. The U.S. Census Bureau estimates the U.S. resident population for December 1, 2015 as 322,259,557. See Exhibit 1, U.S. Census Bureau web page at factfinder.census.gov/faces/tableservices/jsf/pages/productview.xhtml?src=bkmk, retrieved December 8, 2015. Based on this estimate, 100 people represent 1 in every 3,222,595.57 residents of the U.S., a tiny fraction of the population.
Moreover, the TTAB previously held that despite, “1,295 listings from the Phonedisc database and numerous representative excerpts from Nexis articles” the surname at issue was still rare. In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000).
Applicant does not argue that there are zero people in the U.S. with “Olin” as a last name, but rather that the surname is rare. Because the surname is rare, American consumers will not view it as primarily a surname when encountering Applicant’s OLIN mark. While a few well known people with a particular surname may create such an association, the evidence in the Office Action does not identify anyone so famous or well-known as to indicate that “Olin” will be viewed as a surname by the American consumer. The people identified in the evidence are more likely to be the “dentist, a lawyer, a creative director, an artist, a columnist, a therapist” that the TTAB found insufficient to “outweigh the rareness of [the] surname” in In re Markbens Administradora de Bens Eireli. In re Markbens Administradora de Bens Eireli, Serial No. 85713043 (TTAB September 9, 2014) [not precedential].
The fact that Applicant’s founders had the last name Olin does not necessarily mean that the public will perceive the OLIN trademark as merely a surname. The TTAB, in the case In re Okamoto Corp., reversed a surname refusal despite the fact that, “Tetsuji Okamoto is Applicant’s president suggests that the public may recognize “Okamoto” as a surname.” In re Okamoto, Serial No. 85739429 (TTAB February 6, 2015) [not precedential]. This was due to, “the rarity of the surname [being] of particular importance in [the] weighing of the factors.” Id. The evidence in Okamoto included a search of the Lexis Public Records database showing 738 entries for “Okamoto.” Id. If a surname with 738 directory listings is so rare that it will not be viewed as merely a surname, despite the fact that the applicant’s current president had that surname, then 100 listings surely must indicate a rarity that outweighs the fact that Applicant, founded in 1892, had founders with the last name “Olin.”
The word “Olin” does not have any other recognized meaning in the U.S., but this does not show that OLIN will be viewed primarily as a surname. See In re BDH Two Inc., 26 USPQ2d 1556, 1558 (TTAB 1993) (The Board found “[t]hat there are telephone directory listings and that there are no other meanings of [the mark] in the English language does not mandate refusal in this case under the “primarily merely a surname” statutory language” in reversing the primarily a surname refusal).
The Office Action contends that OLIN has the “structure and pronunciation of other common surnames that begin with the same letters.” The TTAB has admitted that this factor is, “very subjective.” In re Jack B. Binion, 93 USPQ2d 1531, 1537 (TTAB 2009). The evidence submitted in the office action for surnames that start with “Oli” starts, for example, with “Oliandus,” “Oliani,” and “Olias.” A blanket assertion that such names are also common surnames is insufficient to show that OLIN has the look and feel of a surname. In fact, the only surname from the list of “Oli” last names that was in the top 1000 surnames in the 2000 Census is “Oliver.” See Exhibit 3, U.S. Census Bureau web page at www.census.gov/t opics/population/genealogy/data/2000_surnames.html, retrieved April 15, 2016. This evidence suggests that OLIN does not have the look and feel of a surname. “[I]f a term does not have the “look and feel” of a surname, it should not be refused registration even if there is evidence to show that it is, in fact, a surname.” In re Joint-Stock Company “Baik”, 84 USPQ2d 1921, 1924 (TTAB 2007) (Seeherman, A.T.J., concurring).
This application covers the OLIN mark in standard characters and is based on a bona fide intent to use the mark. Therefore, there is no stylization of the mark to be considered under the fifth factor and this factor is neutral as to whether the mark is primarily merely a surname.
While each application must be examined on its own merits, Applicant already owns incontestable U.S. Registration No. 3,414,111 which covers OLIN in standard characters. This registration, and its claimed date of first use of 1981, suggests that consumers view OLIN as a trade name and trademark of Applicant, not as merely a surname. Applicant’s declaration filed with its November 30, 2007 Response to the Office Action establishes that Applicant is a Fortune 1000 company with $2,200,000,000 in revenue and more than 6,000 employees.
The evidence shows that “Olin” is a rare surname. The remainder of the evidence fails to establish a prima facie case that consumers will view OLIN as a rare surname instead of a trademark of Applicant, a large and long-established company.
The Office Action fails to establish a prima facie case that the OLIN mark will be considered primarily merely a surname by the American public and accordingly Applicant respectfully requests that the refusal be withdrawn. . |
|
| 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 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; |
|
| 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 | 04/28/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Apr 28 22:55:39 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0160428225539898221-86651 083-550bd754117a15719b89c 3e4790548b37a86424c1d07af 71a65115d116c0d05dd3-N/A- N/A-20160428223408797783 |
| 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 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
Applicant respectfully requests reconsideration of the refusal of registration of the trademark OLIN on the grounds that it is primarily merely a surname. The Office Action states that Applicant's showing of acquired distinctiveness was unsupported. Applicant was not attempting to show acquired distinctiveness; applicant was attempting to prove that the primary significance of the mark OLIN is not a surname, but the name and brand of a major American corporation.
The Office Action has at most identified 100 individual who may have the surname OLIN. In contrast, applicant established that OLIN Corporation has been an NYSE Company since 1917 (McIntosh Decl. Para. 1). That OLIN Corporation is one of the top 1000 corporations in the country (McIntosh Decl. Para. 1). Most significantly, applicant established that there 5,900 more people who work for Olin Corporation (McIntosh Decl. Para. 2) than the Office has established has are named Olin. It is far more likely that someone encountering the term OLIN will (correctly) associate it with the major American corporation, than think is it identifying someone's surname.
Applicant's point is not that the term OLIN has acquired distinctiveness, but that the name and company are so well known, the primary significance to the vast majority of Americans is not as a surname, but as a company name and trademark.
In the Office Action of September 16, 2015 (“Office Action”) the Examining Attorney refused registration under Section 2(e)(4) on the grounds that the mark is primarily merely a surname. This refusal was subsequently continued on March 8, 2016. Applicant submits that OLIN will not primarily be perceived as a surname by consumers and, accordingly, Applicant respectfully requests that the refusal be withdrawn and the application approved for publication.
The TTAB has listed five factors to be considered when determining whether a term is primarily merely a surname. In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995). They are:
(1) “the degree of a surname’s rareness” Id. at 1333 citing In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987).
(2) “whether there is “anyone connected with applicant” having the surname” Id. citing In re Monotype Corp., 14 USPQ2d 1070, 1071 (TTAB 1989).
(3) “whether or not [the term] has any “recognized meaning other than that of a surname” Id. citing In re BDH Two Inc., 26 USPQ2d 1556, 1558 (TTAB 1993).
(4) “whether [the term] has the “structure and pronunciation” of a surname” Id. citing In re Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988).
(5) “if the stylization [is] distinctive enough” to “cause the mark not to be perceived as primarily merely a surname” Id. at 1334 citing In re Pickett Hotel Co., 229 USPQ 760, 763 (TTAB 1986).
The burden is on the examining attorney to establish a prima facie case that the term is primarily merely a surname. See In re Etablissements Darty et Fils, 225 USPQ 652, 653 (Fed. Cir. 1985). “If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of applicant.” TMEP §1211.01 citing In re Yeley, 85 USPQ2d 1150, 1151 (TTAB 2007); Benthin at 1334.
As evidence that OLIN will be perceived as primarily merely a surname the Examining Attorney attached a sample of the results from a search of the website 411.com showing 100 entries for “Olin.” The sample contained the first eleven entries of the search results.
The sample does not establish that the directory listings are 100 different people, without duplication or error. Even if it were true that 100 people in the U.S. had the last name “Olin,” the surname should still be considered rare. The U.S. Census Bureau estimates the U.S. resident population for December 1, 2015 as 322,259,557. See Exhibit 1, U.S. Census Bureau web page at factfinder.census.gov/faces/tableservices/jsf/pages/productview.xhtml?src=bkmk, retrieved December 8, 2015. Based on this estimate, 100 people represent 1 in every 3,222,595.57 residents of the U.S., a tiny fraction of the population.
Moreover, the TTAB previously held that despite, “1,295 listings from the Phonedisc database and numerous representative excerpts from Nexis articles” the surname at issue was still rare. In re United Distillers plc, 56 USPQ2d 1220, 1221 (TTAB 2000).
Applicant does not argue that there are zero people in the U.S. with “Olin” as a last name, but rather that the surname is rare. Because the surname is rare, American consumers will not view it as primarily a surname when encountering Applicant’s OLIN mark. While a few well known people with a particular surname may create such an association, the evidence in the Office Action does not identify anyone so famous or well-known as to indicate that “Olin” will be viewed as a surname by the American consumer. The people identified in the evidence are more likely to be the “dentist, a lawyer, a creative director, an artist, a columnist, a therapist” that the TTAB found insufficient to “outweigh the rareness of [the] surname” in In re Markbens Administradora de Bens Eireli. In re Markbens Administradora de Bens Eireli, Serial No. 85713043 (TTAB September 9, 2014) [not precedential].
The fact that Applicant’s founders had the last name Olin does not necessarily mean that the public will perceive the OLIN trademark as merely a surname. The TTAB, in the case In re Okamoto Corp., reversed a surname refusal despite the fact that, “Tetsuji Okamoto is Applicant’s president suggests that the public may recognize “Okamoto” as a surname.” In re Okamoto, Serial No. 85739429 (TTAB February 6, 2015) [not precedential]. This was due to, “the rarity of the surname [being] of particular importance in [the] weighing of the factors.” Id. The evidence in Okamoto included a search of the Lexis Public Records database showing 738 entries for “Okamoto.” Id. If a surname with 738 directory listings is so rare that it will not be viewed as merely a surname, despite the fact that the applicant’s current president had that surname, then 100 listings surely must indicate a rarity that outweighs the fact that Applicant, founded in 1892, had founders with the last name “Olin.”
The word “Olin” does not have any other recognized meaning in the U.S., but this does not show that OLIN will be viewed primarily as a surname. See In re BDH Two Inc., 26 USPQ2d 1556, 1558 (TTAB 1993) (The Board found “[t]hat there are telephone directory listings and that there are no other meanings of [the mark] in the English language does not mandate refusal in this case under the “primarily merely a surname” statutory language” in reversing the primarily a surname refusal).
The Office Action contends that OLIN has the “structure and pronunciation of other common surnames that begin with the same letters.” The TTAB has admitted that this factor is, “very subjective.” In re Jack B. Binion, 93 USPQ2d 1531, 1537 (TTAB 2009). The evidence submitted in the office action for surnames that start with “Oli” starts, for example, with “Oliandus,” “Oliani,” and “Olias.” A blanket assertion that such names are also common surnames is insufficient to show that OLIN has the look and feel of a surname. In fact, the only surname from the list of “Oli” last names that was in the top 1000 surnames in the 2000 Census is “Oliver.” See Exhibit 3, U.S. Census Bureau web page at www.census.gov/t opics/population/genealogy/data/2000_surnames.html, retrieved April 15, 2016. This evidence suggests that OLIN does not have the look and feel of a surname. “[I]f a term does not have the “look and feel” of a surname, it should not be refused registration even if there is evidence to show that it is, in fact, a surname.” In re Joint-Stock Company “Baik”, 84 USPQ2d 1921, 1924 (TTAB 2007) (Seeherman, A.T.J., concurring).
This application covers the OLIN mark in standard characters and is based on a bona fide intent to use the mark. Therefore, there is no stylization of the mark to be considered under the fifth factor and this factor is neutral as to whether the mark is primarily merely a surname.
While each application must be examined on its own merits, Applicant already owns incontestable U.S. Registration No. 3,414,111 which covers OLIN in standard characters. This registration, and its claimed date of first use of 1981, suggests that consumers view OLIN as a trade name and trademark of Applicant, not as merely a surname. Applicant’s declaration filed with its November 30, 2007 Response to the Office Action establishes that Applicant is a Fortune 1000 company with $2,200,000,000 in revenue and more than 6,000 employees.
The evidence shows that “Olin” is a rare surname. The remainder of the evidence fails to establish a prima facie case that consumers will view OLIN as a rare surname instead of a trademark of Applicant, a large and long-established company.
The Office Action fails to establish a prima facie case that the OLIN mark will be considered primarily merely a surname by the American public and accordingly Applicant respectfully requests that the refusal be withdrawn.
.