| 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 | 88002662 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88002662/mark.png |
| LITERAL ELEMENT | MACDONALD |
| 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 thanks the examining attorney for the thorough consideration given the present application. 2(e)(4) Primarily Merely a Surname Refusal: Applicant's MACDONALD mark is refused registration on the Principal Register because the mark purportedly is primarily merely a surname. Applicant respectfully traverses because the Trademark Office failed to meet its burden of establishing a prima facie case that MACDONALD is primarily merely a surname. The USPTO has the burden of establishing a prima facie case that a term is primarily merely a surname. In re Etablissements Party et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985). Moreover, “[t]he question of whether a word sought to be registered is primarily merely a surname within the meaning of the statute can only be resolved on a case by case basis,” taking into account a number of various factual considerations. Id. The Trademark Trial and Appeal Board has identified five factors to be considered in making a determination of whether a term is primarily merely a surname: (1) whether the surname is rare; (2) whether the term is the surname of anyone connected with the applicant; (3) whether the term has any recognized meaning other than as a surname; (4) whether it has the “look and feel” of a surname; and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression. In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995). In support of the refusal, the examining attorney attached evidence from LexisNexis to establish the surname significance of MACDONALD. This evidence, however, does little to establish that MACDONALD is primarily merely a surname. According to the LexisNexis results, there are 66640 MACDONALD surname records found. The current population of the United States is approximately 327 million people. 66640 is only .02% of the 327 million. In other words, less than half of one percent of the people in the United States has the surname MACDONALD. As such, MACDONALD is a rare surname. In recent years, the Board has placed great weight on the rareness factor. In reversing a surname refusal of BAIK, the Board remarked that “Baik is an extremely rare surname. In concluding so, we rely on the fact that only 456 examples of the Baik surname were located from a comprehensive directory of the entire United States.” In re Joint-Stock Company “Baik,” 84 USPQ2d 1921, 1923 (TTAB 2007). Similarly, in In re Benthin, the TTAB determined that evidence of a relatively small number of telephone directory listings of “Benthin” demonstrated that the mark was a rare surname and the TTAB found that the mark was not primarily merely a surname. In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995). Likewise, in 2009 the Board reversed a surname refusal of BERGFELD for wine, explaining that it was giving the rareness factor “much more weight than the other three factors”: We find, based on the evidence, that BERGFELD is an extremely rare surname. Although the examining attorney submitted evidence showing use of the surname “Bergfeld” in commerce by different individuals, she was only able to produce evidence indicating there are fewer than 300 individuals with that surname after searching two comprehensive databases. […]In balancing the aforementioned factors, we make no secret that the first factor, rareness of the surname, has been given much more weight than the other three factors. And, in doing so, we find that any slight tilt toward finding the mark as being primarily a surname based on the other factors is outweighed by the fact that there are fewer than 300 persons with the surname “Bergfeld.” Ultimately, we conclude that applicant’s proposed mark, BERGFELD, is so rarely used as a surname, and that the remaining Benthin factors provide little additional support for a finding that it would be so perceived by consumers, that it is not primarily merely a surname. In re Hall Wines, LLC, Serial No. 78926151 (TTAB February 10, 2009) (non-precedential). In the present case, the evidence demonstrates that the number of individuals in the entire United States with the surname MACDONALD is relatively low, which supports applicant’s position that its mark MACDONALD is not primarily merely a surname within the meaning of Section 2(e)(4). That is, “the word ‘primarily’ was added to ‘merely’ with the clear ‘intent […] to prevent a refusal to register only because a surname was found in a directory to be the name of somebody somewhere.’” In re Garan Inc., 3 U.S.P.Q.2d 1537, 1539 (TTAB 1987) (quoting Ex Parte Rivera Watch Corp., 106 U.S.P.Q. 145, 149 (Comm’r Pats. 1955)). In view of the foregoing, applicant respectfully submits that the rarity of MACDONALD as a surname is evidence that the refusal should be withdrawn and the application approved for publication. The second of the five factors the Trademark Trial and Appeal Board takes into consideration is whether the term is a surname of “anyone connected with the applicant.” In re Monotype Corp., 14 USPQ2d 1070, 1071. In this case, no one connected with the applicant has the surname MACDONALD or any literal equivalents thereto. In view of the weight given the first two factors in the primarily merely a surname analysis, and the fact that both factors weigh against a finding that MACDONALD is primarily merely a surname, applicant respectfully submits that the Trademark Office has failed to meet its burden of establishing a prima facie case. Withdrawal of the primarily merely a surname refusal is respectfully requested. |
|
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | REMARKS: Applicant has submitted argument in response to the primarily merely a surname refusal. There being no other issues raised in the Office Action, applicant believes that the present application is in condition to be approved for publication.An early Notice of Publication is respectfully requested. If the examining attorney has any questions concerning this application, the examining attorney is requested to contact Robert J. Kenney at (703) 205-8000 in the Washington, D.C. area. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Robert J. Kenney/ |
| SIGNATORY'S NAME | Robert J. Kenney |
| SIGNATORY'S POSITION | Attorney of record, VA bar member |
| SIGNATORY'S PHONE NUMBER | 703-205-8000 |
| DATE SIGNED | 04/09/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Apr 09 14:33:17 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XXX- 20190409143317735094-8800 2662-620769acbab8eb5af75f 732c7f2a4b59df0e052498090 c053f5f759917e9e5f-N/A-N/ A-20190409131516466452 |
| 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) |
Applicant thanks the examining attorney for the thorough consideration given the present application.
2(e)(4) Primarily Merely a Surname Refusal:
Applicant's MACDONALD mark is refused registration on the Principal Register because the mark purportedly is primarily merely a surname. Applicant respectfully traverses because the Trademark Office failed to meet its burden of establishing a prima facie case that MACDONALD is primarily merely a surname.
The USPTO has the burden of establishing a prima facie case that a term is primarily merely a surname. In re Etablissements Party et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985). Moreover, “[t]he question of whether a word sought to be registered is primarily merely a surname within the meaning of the statute can only be resolved on a case by case basis,” taking into account a number of various factual considerations. Id.
The Trademark Trial and Appeal Board has identified five factors to be considered in making a determination of whether a term is primarily merely a surname:
(1) whether the surname is rare;
(2) whether the term is the surname of anyone connected with the applicant;
(3) whether the term has any recognized meaning other than as a surname;
(4) whether it has the “look and feel” of a surname; and
(5) whether the stylization of lettering is distinctive enough to create a separate commercial impression.
In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995).
In support of the refusal, the examining attorney attached evidence from LexisNexis to establish the surname significance of MACDONALD. This evidence, however, does little to establish that MACDONALD is primarily merely a surname. According to the LexisNexis results, there are 66640 MACDONALD surname records found. The current population of the United States is approximately 327 million people. 66640 is only .02% of the 327 million. In other words, less than half of one percent of the people in the United States has the surname MACDONALD.
As such, MACDONALD is a rare surname. In recent years, the Board has placed great weight on the rareness factor. In reversing a surname refusal of BAIK, the Board remarked that “Baik is an extremely rare surname. In concluding so, we rely on the fact that only 456 examples of the Baik surname were located from a comprehensive directory of the entire United States.” In re Joint-Stock Company “Baik,” 84 USPQ2d 1921, 1923 (TTAB 2007). Similarly, in In re Benthin, the TTAB determined that evidence of a relatively small number of telephone directory listings of “Benthin” demonstrated that the mark was a rare surname and the TTAB found that the mark was not primarily merely a surname. In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995).
Likewise, in 2009 the Board reversed a surname refusal of BERGFELD for wine, explaining that it was giving the rareness factor “much more weight than the other three factors”:
We find, based on the evidence, that BERGFELD is an extremely rare surname. Although the examining attorney submitted evidence showing use of the surname “Bergfeld” in commerce by different individuals, she was only able to produce evidence indicating there are fewer than 300 individuals with that surname after searching two comprehensive databases. […]In balancing the aforementioned factors, we make no secret that the first factor, rareness of the surname, has been given much more weight than the other three factors. And, in doing so, we find that any slight tilt toward finding the mark as being primarily a surname based on the other factors is outweighed by the fact that there are fewer than 300 persons with the surname “Bergfeld.” Ultimately, we conclude that applicant’s proposed mark, BERGFELD, is so rarely used as a surname, and that the remaining Benthin factors provide little additional support for a finding that it would be so perceived by consumers, that it is not primarily merely a surname.
In re Hall Wines, LLC, Serial No. 78926151 (TTAB February 10, 2009) (non-precedential).
In the present case, the evidence demonstrates that the number of individuals in the entire United States with the surname MACDONALD is relatively low, which supports applicant’s position that its mark MACDONALD is not primarily merely a surname within the meaning of Section 2(e)(4). That is, “the word ‘primarily’ was added to ‘merely’ with the clear ‘intent […] to prevent a refusal to register only because a surname was found in a directory to be the name of somebody somewhere.’” In re Garan Inc., 3 U.S.P.Q.2d 1537, 1539 (TTAB 1987) (quoting Ex Parte Rivera Watch Corp., 106 U.S.P.Q. 145, 149 (Comm’r Pats. 1955)). In view of the foregoing, applicant respectfully submits that the rarity of MACDONALD as a surname is evidence that the refusal should be withdrawn and the application approved for publication.
The second of the five factors the Trademark Trial and Appeal Board takes into consideration is whether the term is a surname of “anyone connected with the applicant.” In re Monotype Corp., 14 USPQ2d 1070, 1071. In this case, no one connected with the applicant has the surname MACDONALD or any literal equivalents thereto.
In view of the weight given the first two factors in the primarily merely a surname analysis, and the fact that both factors weigh against a finding that MACDONALD is primarily merely a surname, applicant respectfully submits that the Trademark Office has failed to meet its burden of establishing a prima facie case. Withdrawal of the primarily merely a surname refusal is respectfully requested.