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. 88396611 SELKIRK(Standard Characters, see http://uspto.report/TM/88396611/mark.png) has been amended as follows:

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

This is a response to the Office Action issued on July 8, 2019, wherein the Examining Attorney refused registration of Applicant’s SELKIRK mark, Serial Number 88/396,611, on the grounds that that the applied-for mark is merely a surname pursuant to Section 2(e)(4) of the Lanham Act.  Applicant respectfully disagrees that the applied-for mark is merely a surname for the reasons set forth below and requests that the refusal be withdrawn and the application be advanced to publication.

Whether a mark is primarily merely a surname depends on the primary significance of the mark as a whole to the purchasing public.  TMEP 1211.01.  The Trademark Trial and Appeal Board has identified several non-exclusive factors that may lead to evidence regarding the public’s perception of a term’s primary significance:

(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 “structure and pronunciation” of a surname; and

TMEP 1211.01.[i]  If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant.  Id.

Here, Applicant respectfully disagrees that the evidence presented by the Examining Attorney establishes a prima face case that Applicant’s SELKIRK mark is primarily merely a surname.  TMEP 1211.02(a).

• SELKIRK is not the Surname of Anyone Connected with Applicant.

  A term that is the surname of an officer, owner, or principal of applicant’s business can be probative evidence of the term’s surname significance.  TMEP §1211.02(b)(iv).  The Examining Attorney included in the refusal a printout of an article from the Spokesman Review which included the language “Selkirk Pharma CEO Patrick Selkirk declined….”  Based on that article, the Examining Attorney reasonably concluded that Applicant’s CEO’s surname was Selkirk.  That article, however, did not properly identify the CEO’s name which is Patrick Haffey.  This is demonstrated in part by Mr. Haffey’s signature and title on the original application as well as the included evidence from Applicant’s website identifying the leadership team of Selkirk Pharma, identifying Mr. Haffey as CEO.  Applicant does not have any other individuals with the surname Selkirk connected with Applicant.  In the absence of any evidence that a person using “Selkirk” as a surname has a relevant and tangible connection with Applicant, this factor is neutral.[ii]

• SELKIRK is at Most an Extremely Rare Surname.

  As the Examining Attorney notes, SELKIRK only appears 609 times as a surname in the LEXISNEXIS® surname database.  The ranking of surnames compiled by the U.S. Census Bureau from the 2010 Census shows that Selkirk occurred a total of 445 time out of over 295 million people, or roughly 0.0000015% of people in the United States., see http://www.census.gov/topics/population/genealogy/data/2010_surnames.html.  Applicant notes that the U.S. Census is a standard reference, and therefore judicial notice may be taken.  In re Weiss Watch Co., 123 USPQ2d 1200, 1203 n.5 (TTAB 2017).  However, Applicant is also happy to provide a printout of the table from the identified website, but notes that it will be in excess of 6000 PDF pages.[iii]  This vanishingly small number of people with this surname as compared to the general United States population shows that Selkirk is a rare surname.

  There is also nothing in record suggesting that consumers have been exposed in any meaningful way to Selkirk as a surname.  TMEP 1211.01(a)(V).  Given the overall rareness of the surname, this lack of exposure suggests that consumers would not consider the mark SELKIRK’s primary significance to be a surname.  Based on this record, SELKIRK unquestionably qualifies as an extremely rare surname, which weighs against a finding that SELKIRK is primarily viewed by consumers as a surname.[iv]

• The geographical significance of the mark SELKIRK is equally as dominant as the surname significance.

  Whatever limited significance the applied-for mark may have as a surname, the geographical significance of the mark is equally dominant.  In support that “Selkirk” is primarily a surname, the Examining Attorney relies in part on an entry from forebears.io which indicates that the significance of the surname is “of local origin from the town of Selkirk.”  Applicant has also attached evidence showing that Selkirk is at least the name of a town and historic royal burgh in Scotland.  The existence of this equally dominant meaning of Selkirk is further evidence that Selkirk is not considered by consumers to be primarily perceived as a surname.  TMEP 1211.01(a)(iii).

• There are other registration for SELKIRK that were permitted by the USPTO

  The USPTO has previously allowed registration of the mark Selkirk which is further evidence that consumers to not believe the primary significance of the term is as a surname.

1,335,094	SELKIRK	6: Pipes, and Clamps and Fittings Therefor, All Made Primarily of Metal 11: Gas Heaters and Pipes for Heating and Ventilating Equipment and Supports and Parts Therefor
4,838,411	SELKIRK	8: Hunting knives; side arms, not including firearms, namely, hunting knives; sport knives
5,347,614	SELKIRK	19: Hardwood flooring

 

• No Factor Weighs in Favor of Finding that SELKIRK is primarily merely a surname.

  As demonstrated above, none of the factors weighs in favor of finding that SELKIRK is primarily merely a surname.  Moreover, if there is any doubt as to whether a term is primarily merely a surname, the doubt must be resolved in favor of Applicant.  TMEP 1211.01.

  Accordingly, the Applicant respectfully requests that the refusal to register SELKIRK on the basis that the mark is primarily merely a surname is withdrawn.

EVIDENCE
Evidence in the nature of evidence references in argument has been attached.
Original PDF file:
evi_69821736-20190815171533137065_._Leadership___Selkirk_Pharma___Spokane__WA.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_69821736-20190815171533137065_._Selkirk__Scottish_Borders_-_Wikipedia.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_69821736-20190815171533137065_._Selkirk_Ex_1.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_69821736-20190815171533137065_._Selkirk_Ex_2.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_69821736-20190815171533137065_._Selkirk_Ex_3.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Pharmaceutical manufacturing; pharmaceutical production; pharmaceutical testing; contract manufacturing services in the field of pharmaceuticals
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 03/28/2018 and first used in commerce at least as early as 03/28/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Pharmaceutical manufacturing; pharmaceutical production; contract manufacturing services in the field of pharmaceuticals; pharmaceutical testingClass 040 for Pharmaceutical manufacturing; contract manufacturing services in the field of pharmaceuticals
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 03/28/2018 and first used in commerce at least as early as 03/28/2018 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Pharmaceutical production in the nature of pharmaceutical product development; testing of pharmaceuticals
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 03/28/2018 and first used in commerce at least as early as 03/28/2018 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 042 . The specimen(s) submitted consists of use of mark in connection with description of offered services. .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-69821736-20190815171533137065_._Specimen_Selkirk.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

The applicant's current attorney information: Matthew E. Moersfelder. Matthew E. Moersfelder of DAVIS WRIGHT TREMAINE LLP, is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      US
The docket/reference number is 108703-4.

The phone number is 206-757-8014.

The fax number is 206-757-7014.

The email address is seatm@dwt.com

The applicants proposed attorney information: Matthew E. Moersfelder. Matthew E. Moersfelder of DAVIS WRIGHT TREMAINE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      United States
The docket/reference number is 108703-4.

The phone number is 206-757-8014.

The fax number is 206-757-7014.

The email address is seatm@dwt.com

Matthew E. Moersfelder submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: MATTHEW E. MOERSFELDER. MATTHEW E. MOERSFELDER of DAVIS WRIGHT TREMAINE LLP, is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      US
The docket/reference number is 108703-4.

The phone number is 206-757-8014.

The fax number is 206-757-7014.

The email address is seatm@dwt.com; mmoersfelder@dwt.com; chrishagemann@dwt.com; emilyeskew@dwt.com

The applicants proposed correspondence information: Matthew E. Moersfelder. Matthew E. Moersfelder of DAVIS WRIGHT TREMAINE LLP, is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      United States
The docket/reference number is 108703-4.

The phone number is 206-757-8014.

The fax number is 206-757-7014.

The email address is seatm@dwt.com; mmoersfelder@dwt.com; emilyeskew@dwt.com; chrishagemann@dwt.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /MEM/      Date: 08/15/2019
Signatory's Name: Matthew E. Moersfelder
Signatory's Position: Applicant's Attorney, WA Bar Member
Signatory's Phone Number: 206-757-8014


Response Signature
Signature: /MEM/     Date: 08/15/2019
Signatory's Name: Matthew E. Moersfelder
Signatory's Position: Applicant's Attorney, WA Bar Member

Signatory's Phone Number: 206-757-8014

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:    MATTHEW E. MOERSFELDER
   DAVIS WRIGHT TREMAINE LLP
   
   920 FIFTH AVENUE, SUITE 3300
   SEATTLE, Washington 98104-1610
Mailing Address:    Matthew E. Moersfelder
   DAVIS WRIGHT TREMAINE LLP
   920 FIFTH AVENUE, SUITE 3300
   SEATTLE, Washington 98104-1610
        
RAM Sale Number: 88396611
RAM Accounting Date: 08/15/2019
        
Serial Number: 88396611
Internet Transmission Date: Thu Aug 15 17:26:18 EDT 2019
TEAS Stamp: USPTO/ROA-XX.X.XXX.XX-201908151726181905
70-88396611-610a76265798ba7ec5ee7d634f11
3634771deccd3a5bc2f986871fe1583a44d0e-DA
-26171100-20190815171533137065