| 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 09/20/2020) |
| Input Field |
Entered |
|
|---|---|---|
| SERIAL NUMBER | 87525049 | |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 | |
| MARK SECTION | ||
| MARK | http://uspto.report/TM/87525049/mark.png | |
| LITERAL ELEMENT | CULVER | |
| 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 Office Action dated September 5th, 2017, Applicant AS IP Holdco, LLC (“ASIP”) respectfully submits the following remarks:
REFUSAL UNDER SECTION 2(e)(4) – SURNAME REFUSAL
ASIP seeks registration for CULVER for “sinks” in International Class 11. The Examining Attorney has refused registration under Section 2(e)(4) of the Trademark Act, 15 U.S.C. Section 1052(e)(4), on the ground that ASIP's CULVER mark is primarily merely a surname. ASIP respectfully requests reconsideration and allowance of its application for the following reasons:
Applicant contends that consumers of ASIP's CULVER faucets will not see CULVER as "primarily merely a surname," as required to refuse registration under Section 2(e)(4). Conversely, Applicant contends that its mark will be seen as a distinctive trademark by consumers.
CULVER is a rare surname. A search of U.S. census data from 2010 indicates that the surname occurs only 17,566 times...a frequency of approximately one person per every 16,800 people. See TMEP § 1211.01(a)(v).
Applicant confirms that CULVER is not the surname of anyone associated with applicant. The definition of CULVER is “a dove or pigeon” and the term’s etymology indicates that it is from Middle English. (culver. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/culver(accessed: February 23, 2018))
The term CULVER is also known as being the name of a town in Marshall County, Indiana. It is part of Union Township that also includes the communities of Burr Oak, Hibbard, Maxinkuckee and Rutland. The population was 1,353 at the 2010 census. The town is known as the location of the well-known Culver Academies preparatory boarding school.
In light of the above remarks, ASIP requests reconsideration and allowance of this application. If questions remain, ASIP requests the Examining Attorney contact counsel of record, Bruce Proctor, by email at jscott@americanstandard.com or by phone at 732-980-6023. |
||
| SIGNATURE SECTION | ||
| RESPONSE SIGNATURE | /bproctor/ | |
| SIGNATORY'S NAME | Bruce Proctor | |
| SIGNATORY'S POSITION | Senior Vice President and General Counsel | |
| SIGNATORY'S PHONE NUMBER | 732-980-6023 | |
| DATE SIGNED | 02/23/2018 | |
| AUTHORIZED SIGNATORY | YES | |
| FILING INFORMATION SECTION | ||
| SUBMIT DATE | Fri Feb 23 12:33:54 EST 2018 | |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.X-2018 0223123354744265-87525049 -510e49afa13cb1337ee998e3 f587f50fc306dd4f91cd82adf 6e3fdbad612-N/A-N/A-20180 223123046370172 |
|
| 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 09/20/2020) |
In response to the Office Action dated September 5th, 2017, Applicant AS IP Holdco, LLC (“ASIP”) respectfully submits the following remarks:
REFUSAL UNDER SECTION 2(e)(4) – SURNAME REFUSAL
ASIP seeks registration for CULVER for “sinks” in International Class 11. The Examining Attorney has refused registration under Section 2(e)(4) of the Trademark Act, 15 U.S.C. Section 1052(e)(4), on the ground that ASIP's CULVER mark is primarily merely a surname. ASIP respectfully requests reconsideration and allowance of its application for the following reasons:
Applicant contends that consumers of ASIP's CULVER faucets will not see CULVER as "primarily merely a surname," as required to refuse registration under Section 2(e)(4). Conversely, Applicant contends that its mark will be seen as a distinctive trademark by consumers.
CULVER is a rare surname. A search of U.S. census data from 2010 indicates that the surname occurs only 17,566 times...a frequency of approximately one person per every 16,800 people. See TMEP § 1211.01(a)(v).
Applicant confirms that CULVER is not the surname of anyone associated with applicant.
The definition of CULVER is “a dove or pigeon” and the term’s etymology indicates that it is from Middle English. (culver. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://www.dictionary.com/browse/culver(accessed: February 23, 2018))
The term CULVER is also known as being the name of a town in Marshall County, Indiana. It is part of Union Township that also includes the communities of Burr Oak, Hibbard, Maxinkuckee and Rutland. The population was 1,353 at the 2010 census. The town is known as the location of the well-known Culver Academies preparatory boarding school.
|
Additional evidence of the distinctive nature of the mark is found in a search of the USPTO’s Principal Register, which includes the following active registration, comprised in entirety of the term CULVER as a distinctive mark and not as a surname related to the registrant’s business, namely:
Registration No. 1640408 (April 9, 1991) for CULVER in International Class 14 for “decorative glassware and serve ware of glass and acrylic, trimmed with gold, namely, glasses, tumblers, ice buckets, pitchers, coasters and coaster holders, stirrers and decanters” and in International Class 21 for “Decorative glassware and serve ware of glass and acrylic, namely, glasses, tumblers, ice buckets, pitchers, coasters and coaster holders, stirrers and decanters” currently in the name of Moderne Glass Company, Inc. of 1000 Industrial Boulevard, Aliquippa, PA.
Applicant contends that CULVER has neither the structure nor the pronunciation of a surname. |
In light of the above remarks, ASIP requests reconsideration and allowance of this application. If questions remain, ASIP requests the Examining Attorney contact counsel of record, Bruce Proctor, by email at jscott@americanstandard.com or by phone at 732-980-6023.