| 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 | 87233999 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87233999/mark.png |
| LITERAL ELEMENT | BARBOUR |
| 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) | |
|
RESPONSE
Applicant submits the following remarks in response to the February 21, 2017 Office Action. Remarks Surname Refusal Under § 2(e)(4) The Examining Attorney has initially refused to register Applicant’s mark, contending
that the mark is primarily merely a surname. Applicant respectfully disagrees and submits that the name BARBOUR will not be primarily understood by consumers as merely a surname
because the name is rare in the U.S. and consumers will understand that the mark refers primarily to the commercial goodwill associated with Applicant. In the alternative and only in the event that
the Examining Attorney disagrees, Applicant seeks registration under § 2(f) of the Trademark Act because the mark has become distinctive of the applied-for goods as
evidenced by its ownership of active U.S. Registration Nos. 4683146, 4677028, 1620389, and 1265059 on the Principal Register for the same mark for sufficiently similar goods and services. Applicant
submits the requisite corresponding declaration with this response. Presumptively, the mark has achieved secondary meaning. See 15 U.S.C. § 1052(f); T.M.E.P. § 1212.04.
Therefore, the mark should be registerable on the Principal Register. Examiner’s Inquiry Question The Examining Attorney has asked whether anyone connected with Applicant is using the
term BARBOUR as a surname. Applicant submits that the company chairman is presently Dame Margaret Barbour and her daughter, Helen Barbour, is vice chairman. Foreign Registration Date The Examining Attorney has asked for additional clarification about the corresponding
date of the foreign registration that this application is based on. The registration date of the corresponding UK registration is May 20, 2008 as indicated on the Registration Certificate, with an
expiration date of May 20, 2018. Signed Declaration Applicant submits the requisite declaration in support of the application with this response. Conclusion In view of the foregoing, the Applicant believes the application is in condition for publication. Such action is solicited. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_38111352-20170620130536214628_._B0621.20021US02_Signed_Declaration_Under_2_f_.PDF |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\872\339\87233999\xml6\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Section 2(f) Declaration - Claim of Acquired Distinctiveness, submitted in the event that the Examining Attorney disagrees with Applicant's arguments against the surname refusal. See written Response. |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | Examiner's Inquiry Question The Examining Attorney has asked whether anyone connected with Applicant is using the term BARBOUR as a surname. Applicant submits that the company chairman is presently Dame Margaret Barbour and her daughter, Helen Barbour, is vice chairman. |
| SIGNATURE SECTION | |
| ORIGINAL PDF FILE | HS_38111352-130536214_._B0621.20021US02___signed_application_Dec.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\872\339\87233999\xml6\ROA0003.JPG |
| SIGNATORY'S NAME | Chris Turner |
| SIGNATORY'S POSITION | Head of Legal Services |
| RESPONSE SIGNATURE | /cml/ |
| SIGNATORY'S NAME | Christina M. Licursi |
| SIGNATORY'S POSITION | Attorney for Applicant |
| SIGNATORY'S PHONE NUMBER | (617) 646-8384 |
| DATE SIGNED | 06/20/2017 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jun 20 13:14:37 EDT 2017 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.X-201 70620131437785848-8723399 9-59035ae91108d6f88508152 dd2cbd6f42f3f429d1eabb4f3 831cff859748ea16d94-N/A-N /A-20170620130536214628 |
| 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) |
RESPONSE
Applicant submits the following remarks in response to the February 21, 2017 Office Action.
Remarks
Surname Refusal Under § 2(e)(4)
The Examining Attorney has initially refused to register Applicant’s mark, contending
that the mark is primarily merely a surname. Applicant respectfully disagrees and submits that the name BARBOUR will not be primarily understood by consumers as merely a surname
because the name is rare in the U.S. and consumers will understand that the mark refers primarily to the commercial goodwill associated with Applicant. In the alternative and only in the event that
the Examining Attorney disagrees, Applicant seeks registration under § 2(f) of the Trademark Act because the mark has become distinctive of the applied-for goods as
evidenced by its ownership of active U.S. Registration Nos. 4683146, 4677028, 1620389, and 1265059 on the Principal Register for the same mark for sufficiently similar goods and services. Applicant
submits the requisite corresponding declaration with this response. Presumptively, the mark has achieved secondary meaning. See 15 U.S.C. § 1052(f); T.M.E.P. § 1212.04.
Therefore, the mark should be registerable on the Principal Register.
Examiner’s Inquiry Question
The Examining Attorney has asked whether anyone connected with Applicant is using the
term BARBOUR as a surname. Applicant submits that the company chairman is presently Dame Margaret Barbour and her daughter, Helen Barbour, is vice chairman.
Foreign Registration Date
The Examining Attorney has asked for additional clarification about the corresponding
date of the foreign registration that this application is based on. The registration date of the corresponding UK registration is May 20, 2008 as indicated on the Registration Certificate, with an
expiration date of May 20, 2018.
Signed Declaration
Applicant submits the requisite declaration in support of the application with this response.
Conclusion
In view of the foregoing, the Applicant believes the application is in condition for publication. Such action is solicited.
