Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88362897 TRUEMAN(Standard Characters, see http://uspto.report/TM/88362897/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The examining attorney has refused registration of applicant's mark on the grounds that "Trueman" is primarily a surname. In support of this position, the examining attorney cites to webpage printouts from whitepages.com and a LexisNexis surname database. For the foregoing reasons, applicant respectfully disagrees with this position and requests that the office action be withdrawn and that applicant's mark be allowed to proceed in the registration process. In support of applicant's position, applicant primarily disagrees that "the surname TRUEMAN is not rare" as is alleged in the office action. While a whitepages.com search may suggest that Trueman appears as a surname over 16,000 times, this is demonstrably false. Though whitepages.com will only provide the first 75 listings in a surname search without a subscription, filtering the whitepages.com surname search by state reveals that of these purported "hits", only a very small fraction are actually for people with the surname of Trueman. By example, see attached search results for "Trueman" in Virginia where only the first 40 out of a search result of 412 listings are actually for people with the surname Trueman. In other words, roughly 91% of the people in this search for "Trueman" do not actually have the last name of Trueman. This search also does not account for possible duplicate entries. Searches in other states produce similar results. The whitepages search also includes approximately 1,500 people who live in Canada, which applicant asserts, are also "false positives" for purposes of whether a mark functions primarily as a surname in United States commerce. Thus, of the approximately 16,000 entries for "Trueman" alleged to be found in the whitepages search by the examining attorney, it is far more realistic to assume that this figure of approximately 14,500 U.S. residents who appear in the whitepages search result for "Trueman" is inflated by 90%; that is approximately 1,450 people in the United States actually have the surname of Trueman (1,600 people if Canada is included). This number also does not account for duplicate entries which would constitute additional false positives. Regarding the examining attorney's LexisNexis search, this search shows 1,160 results but only the first 100 results were provided and no analysis for duplication, false positives, or non-U.S. residents was performed. Therefore, it cannot inherently reliable evidence of the commonality of the surname Trueman. However, assuming that between 1,160 and 1,450 people in the U.S. have the last name of Trueman, there is no scenario where the evidence provided by the examining attorney can support the conclusion that the surname Trueman is ?not rare?. Approximately 327,000,000 million people reside in the U.S and the people with the surname Trueman comprise an infinitesimally small number of all U.S. residents. To contextualize how few people have the last name of Trueman, if all such people were gathered together they would take up 3.5% of all seats at Nationals Park, where the Washington Nationals play and which has 41,313 seats. For all of these reasons, and as set forth above, the surname Trueman is quite rare and in no way supports a finding that the public would perceive the word?s primary significance as a surname. In addition, no one connected with applicant uses the term as a surname and applicant is willing to amend its application to note that the name Trueman does not identify any particular living individual. Finally, the term Trueman is fanciful with regard to the products claimed in the application because it suggests the products are ?true? and of high quality such that consumers can trust that they are obtaining products that a ?Trueman? would provide. The word connotes honorable business practices and quality products. To the extent that it also connotes a surname, which applicant disputes, such connotation would be of far less significance than the connotation of quality and honor. For all of the foregoing reasons, and remembering that the USPTO bears the burden of explaining why a trademark should not be registered, the applicant respectfully states that Trueman, in this case, is not primarily a surname and should be allowed to proceed in the registration process.

EVIDENCE
Evidence in the nature of Printout of whitepages.com search results has been attached.
Original PDF file:
evi_67221120126-20191217173124639245_._whitepages.com.PDF
Converted PDF file(s) ( 29 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
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Evidence-19
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Evidence-29

The applicant's current attorney information: Michael J. Hertz. Michael J. Hertz of WOODS ROGERS PLC, is located at

      SUITE 1400
      10 SOUTH JEFFERSON STREET
      ROANOKE, Virginia 24011
      US

The phone number is 540-983-7611.

The fax number is 540-983-7711.

The email address is mhertz@woodsrogers.com

The applicants proposed attorney information: Michael J. Hertz. Michael J. Hertz of WOODS ROGERS PLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 1400
      10 SOUTH JEFFERSON STREET
      ROANOKE, Virginia 24011
      United States

The phone number is 540-983-7611.

The fax number is 540-983-7711.

The email address is mhertz@woodsrogers.com

Michael J. Hertz submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: MICHAEL J. HERTZ. MICHAEL J. HERTZ of WOODS ROGERS PLC, is located at

      SUITE 1400
      10 SOUTH JEFFERSON STREET
      ROANOKE, Virginia 24011
      US

The phone number is 540-983-7611.

The fax number is 540-983-7711.

The email address is mhertz@woodsrogers.com

The applicants proposed correspondence information: Michael J. Hertz. Michael J. Hertz of WOODS ROGERS PLC, is located at

      SUITE 1400
      10 SOUTH JEFFERSON STREET
      ROANOKE, Virginia 24011
      United States

The phone number is 540-983-7611.

The fax number is 540-983-7711.

The email address is mhertz@woodsrogers.com

ADDITIONAL STATEMENTS
Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.


SIGNATURE(S)
Response Signature
Signature: /Michael J. Hertz/     Date: 12/17/2019
Signatory's Name: Michael J. Hertz
Signatory's Position: Attorney of record, Virginia bar member

Signatory's Phone Number: 540-983-7611

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    MICHAEL J. HERTZ
   WOODS ROGERS PLC
   SUITE 1400
   10 SOUTH JEFFERSON STREET
   ROANOKE, Virginia 24011
Mailing Address:    Michael J. Hertz
   WOODS ROGERS PLC
   SUITE 1400
   10 SOUTH JEFFERSON STREET
   ROANOKE, Virginia 24011
        
Serial Number: 88362897
Internet Transmission Date: Tue Dec 17 17:34:52 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912171734522
45429-88362897-70094be687b6fc4bdb762832d
48d7c8841758fe397935f788d959d347e34f75d5
-N/A-N/A-20191217173124639245