NOTE TO THE FILE
SERIAL NUMBER: 88067376
DATE: 05/30/2019
NAME: pdang4
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Katz, Jeffrey [mailto:JKatz@dglaw.com]
Sent: Thursday, May 30, 2019 7:55 AM
To: Dang, Peter <Peter.Dang@USPTO.GOV>
Cc: Hinton, Candida <chinton@dglaw.com>
Subject: RE: Trademark Application SN: 88067376 - STUDEBAKER
Understood, thanks.
Let’s go with claiming acquired distinctiveness based on the prior registration.
Thank you.
/Jeffrey C. Katz/
JEFFREY C. KATZ
T: 212.468.4823
F: 212.468.4888
DAVIS & GILBERT LLP
1740 Broadway, New York NY 10019
From: Dang, Peter [mailto:Peter.Dang@USPTO.GOV]
Sent: Wednesday, May 29, 2019 7:24 PM
To: Katz, Jeffrey
Cc: Hinton, Candida
Subject: RE: Trademark Application SN: 88067376 - STUDEBAKER
Hi Jeffrey,
Thank you for your email. Unfortunately, there is a significant amount of evidence (as provided in the Office action) that shows that the mark STUDEBAKER is primarily merely a surname. The fact that there are other third-party registrations does not diminish the surname significance of this mark.
However, you may address this refusal by claiming acquired distinctiveness based on the prior registration. Please let me know if that is how you would like to proceed.
Thank you,
/Peter Dang/
Trademark Examining Attorney
Law Office 121
United States Patent & Trademark Office
(571) 270-1998
From: Katz, Jeffrey [mailto:JKatz@dglaw.com]
Sent: Wednesday, May 29, 2019 4:39 PM
To: Dang, Peter <Peter.Dang@USPTO.GOV>
Cc: Hinton, Candida <chinton@dglaw.com>
Subject: RE: Trademark Application SN: 88067376 - STUDEBAKER
Thank you Mr. Dang.
Our first position would be that we do not even need a 2(f) claim because we did not think that STUDEBAKER was primarily and merely a surname, and pointed out multiple third-party registration that fit that scenario. Does that work?
If that is not acceptable, we would agree to a claim of acquired distinctiveness based on the prior registration.
Look forward to hearing back.
/Jeffrey C. Katz/
JEFFREY C. KATZ
T: 212.468.4823
F: 212.468.4888
DAVIS & GILBERT LLP
1740 Broadway, New York NY 10019
From: Dang, Peter [mailto:Peter.Dang@USPTO.GOV]
Sent: Wednesday, May 29, 2019 4:23 PM
To: Katz, Jeffrey
Cc: Hinton, Candida
Subject: Trademark Application SN: 88067376 - STUDEBAKER
Dear Jeffrey Katz,
I am the trademark examining attorney assigned to your trademark application for the mark STUDEBAKER (SN: 88067376). I have reviewed your response and wanted to clarify one issue before we may continue with the application process.
Specifically, the response states that “STUDEBAKER has acquired secondary meaning” in response to the Section 2(e)(4) refusal. However, based on this statement, it is unclear whether you are intending to assert a claim of acquired distinctiveness under Section 2(f) based on your prior registration (U.S. Registration No. 3509858). If so, I can enter this claim of acquired distinctiveness into the record, which would address the 2(e)(4) refusal.
With your permission, I can make the changes by Examiner’s amendment. Please let me know if you have any questions.
Also, please be advised that I have reviewed your response for Application Serial No. 88067361. However, an Office action must be issued for that application, because the claim of acquired distinctiveness is not acceptable and because there are issues with the identification of goods.
Thank you,
/Peter Dang/
Trademark Examining Attorney
Law Office 121
United States Patent & Trademark Office
(571) 270-1998