| 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 2194 (Rev 03/2012) |
| OMB No. 0651-0054 (Exp 10/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87200485 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| PETITION | |
| PETITION STATEMENT | Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application. |
| RESPONSE TO OFFICE ACTION | |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87200485/mark.png |
| LITERAL ELEMENT | CULLINAN |
| 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) | |
|
The Examining Attorney reports that a search of the Office records has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d). However, registration on the Principal Register is refused because the mark is alleged primarily merely a surname. In response, Applicant contends that the word CULLINAN is not primarily a surname and that the refusal to register on the basis is unwarranted and should be withdrawn. While certain individuals may indeed have the surname CULLINAN, the primary significance of the designation CULLINAN is not merely that of a surname. Whether or not a given word is “primarily merely a surname” must be determined by asking the question, “What is the primary significance of the mark to the purchasing public?” McCarthy on Trademarks, 3rd Edition, 13.11(2). This test is subjective and the probable reaction of purchasers in the market place must be examined. This means that the way a word is presented to customers is significant. For example, if a word is presented to customers in a context that emphasizes the surname significance, this is evidence supporting the conclusion that the word is primarily merely a surname. It is submitted that the mark in question, CULLINAN, is presented in a manner which indeed is clearly not a surname presentation, but instead is a trademark presentation. Further, a quick Google discloses over 7,500,000 results for CULLINAN, the most significant of which include a town in South Africa, a brand of diamonds, a realtor, and tempered glass. A mark is barred by Section 2(e)(3) only if purchasers, upon seeing the mark, will only recognize it as a surname, and not as signifying some other meaning. It is urged that in the instant situation, purchasers upon seeing the mark will not recognize it as a surname, but will instead recognize it as the trademark of Applicant. It is thus submitted that the refusal to register CULLINAN under Trademark Act § 2(e) (3), as being “primary merely as a surname” is unwarranted and should be withdrawn. Applicant has registered the trademark CULLEN in the European Community and its application in Canada is proceeding without objection. Applicant submits that the evidence of record is insufficient to establish that the term CULLINAN has a “primary” meaning to the purchasing public, as a “surname”. Instead, it is submitted that the evidence points to the fact that the purchasing public would recognize CULLINAN as the trademark of Applicant. In view of these remarks, it is respectfully submitted that this basis for refusal is unwarranted and should be withdrawn. |
|
| PAYMENT SECTION | |
| TOTAL AMOUNT | 100 |
| TOTAL FEES DUE | 100 |
| SIGNATURE SECTION | |
| PETITION SIGNATURE | /geroos/ |
| SIGNATORY'S NAME | Gwenn Roos |
| SIGNATORY'S POSITION | Attorney of Record (MA) |
| SIGNATORY'S PHONE NUMBER | 781.888.0424 |
| DATE SIGNED | 08/15/2017 |
| RESPONSE SIGNATURE | /geroos/ |
| SIGNATORY'S NAME | Gwenn Roos |
| SIGNATORY'S POSITION | Attorney of Record (MA) |
| SIGNATORY'S PHONE NUMBER | 781.888.0424 |
| DATE SIGNED | 08/15/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Aug 15 16:24:52 EDT 2017 |
| TEAS STAMP | USPTO/POA-XX.XXX.XX.XXX-2 0170815162452552653-87200 485-510c8ac0a92844c8cc2c1 cba8ed237cf70257fd1e0fb39 7e24f04022ecb33f2-CC-3459 -20170815162232291165 |
| 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 2194 (Rev 03/2012) |
| OMB No. 0651-0054 (Exp 10/31/2017) |
The Examining Attorney reports that a search of the Office records has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d).
However, registration on the Principal Register is refused because the mark is alleged primarily merely a surname.
In response, Applicant contends that the word CULLINAN is not primarily a surname and that the refusal to register on the basis is unwarranted and should be withdrawn. While certain individuals may indeed have the surname CULLINAN, the primary significance of the designation CULLINAN is not merely that of a surname.
Whether or not a given word is “primarily merely a surname” must be determined by asking the question, “What is the primary significance of the mark to the purchasing public?” McCarthy on Trademarks, 3rd Edition, 13.11(2). This test is subjective and the probable reaction of purchasers in the market place must be examined. This means that the way a word is presented to customers is significant. For example, if a word is presented to customers in a context that emphasizes the surname significance, this is evidence supporting the conclusion that the word is primarily merely a surname.
It is submitted that the mark in question, CULLINAN, is presented in a manner which indeed is clearly not a surname presentation, but instead is a trademark presentation. Further, a quick Google discloses over 7,500,000 results for CULLINAN, the most significant of which include a town in South Africa, a brand of diamonds, a realtor, and tempered glass.
A mark is barred by Section 2(e)(3) only if purchasers, upon seeing the mark, will only recognize it as a surname, and not as signifying some other meaning. It is urged that in the instant situation, purchasers upon seeing the mark will not recognize it as a surname, but will instead recognize it as the trademark of Applicant.
It is thus submitted that the refusal to register CULLINAN under Trademark Act § 2(e) (3), as being “primary merely as a surname” is unwarranted and should be withdrawn. Applicant has registered the trademark CULLEN in the European Community and its application in Canada is proceeding without objection. Applicant submits that the evidence of record is insufficient to establish that the term CULLINAN has a “primary” meaning to the purchasing public, as a “surname”. Instead, it is submitted that the evidence points to the fact that the purchasing public would recognize CULLINAN as the trademark of Applicant.
In view of these remarks, it is respectfully submitted that this basis for refusal is unwarranted and should be withdrawn.