| 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 | 88460563 |
| LAW OFFICE ASSIGNED | LAW OFFICE 121 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88460563/mark.png |
| LITERAL ELEMENT | CLEMENS |
| 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. |
| OWNER SECTION (current) | |
| NAME | Brasstech, Inc. |
| STREET | 2001 E. Carnegie Ave. |
| CITY | Santa Ana |
| STATE | California |
| ZIP/POSTAL CODE | 92705 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| OWNER SECTION (proposed) | |
| NAME | Brasstech, Inc. |
| STREET | 2001 E. Carnegie Ave. |
| CITY | Santa Ana |
| STATE | California |
| ZIP/POSTAL CODE | 92705 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| lora_graentzdoerffer@mascohq.com | |
| ARGUMENT(S) | |
|
The Examining Attorney has refused registration Applicant’s mark CLEMENS based on a finding that Applicant’s mark CLEMENS is primarily merely a surname. For the following reasons, the refusal is respectfully traversed and reconsideration is requested in view of the following comments. The Examining Attorney bases the refusal on the fact that the term has no other known meaning. Nevertheless, only 26,416 instances of the term used as a surname were found by the Examining Attorney making it an extremely rare surname. Registration should not be refused simply because the mark has no other meanings. The purpose behind prohibiting the registration of surnames is not to protect the public from exposure to surnames but rather to keep surnames available for people who might wish to use their surnames in their businesses. If the surname is rare, it is also unlikely that someone other than the applicant will want to use the surname in connection with plumbing products. In view of the rarity of the term as a surname, it cannot be considered primarily a surname. Accordingly, registration of the current mark should be allowed. The burden of establishing a prima facie case that a term is primarily merely a surname falls on the Examining Attorney. In re Etablissements Darty et Fils, 759 F.2d 15, 225 U.S.P.Q. 652, 653 (Fed. Cir. 1985). In addition, " [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 reviews five factors when determining if a name 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). The Examining Attorney has provided evidence from the LEXIS® surname database for only 26,416 entries for CLEMENS to establish “the surname significance of the surname CLEMENS”. The evidence that CLEMENS appears only 26,416 times in the United States does not establish that CLEMENS is primarily merely a surname. As to the surname significance of the term CLEMENS, similar to Board decision in In re Joint-Stock Company “Baik”, 84 USPQ2d 1921 (TTAB 2007), the evidence submitted by the Examining Attorney reflects that the term CLEMENS is an “extremely rare surname.” As the Board explained, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses. “If the surname is extremely rare, it is also extremely unlikely that someone other than applicant will want to use the surname for the same or related goods or services as that of applicant.”. 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 U.S.P.Q.2d 1070, 1071. In this case, the Applicant respectfully submits that no one connected with the Applicant has the surname CLEMENS or any literal equivalents. The third factor the Board considers when deciding whether a mark is primarily merely a surname is whether the term has any recognized meaning other than as a surname. The absence of a dictionary definition for “CLEMENS” does not provide any real support for the refusal because, as the Board has held: While a significant non-surname meaning usually helps the position of an applicant, we find that the converse (i.e., a determination that the involved term does not have any non-surname meaning) does not help significantly the position of the Trademark Examining Attorney. Amlin, supra. See also In re Garan Inc., 3 U.S.P.Q.2d 1537, 1539 (T.T.A.B. 1987) (“That there are no other meanings of the name in the English language will not support refusal of registration of the surname under the ‘primarily merely a surname’ statutory language unless the average member of the purchasing public would, upon seeing it used as a trademark, recognize it as a surname.”). This collection of evidence indicates that the term is not merely a surname. The fourth factor the Trademark Trial and Appeal Board has identified is whether the mark has the “look and feel” of a surname. 37 U.S.P.Q.2d 1332 at 1334. While the determination as to whether a term has the “look and feel” of a surname is decidedly subjective, it is readily apparent that CLEMENS unlike other terms which look and sound like surnames, does not have the structure and pronunciation of a surname. With the technology available today, almost any term can be found as a surname on a directory yet that should not be a primary indicator. Indeed, CLEMENS falls with the category of words that do not have the appearance of surnames. The final factor the Board takes into consideration is whether the stylization of lettering is distinctive enough to create a separate commercial impression. 37 U.S.P.Q.2d 1332 at 1334. Where the mark is in standard characters, it is unnecessary to consider the fifth factor. In re Yeley, 85 U.S.P.Q.2d 1150, 1151 (T.T.A.B. 2007). In view of the above arguments, Applicant believes that the proposed mark is entitled to registration on the Principal Register. However, if there is any doubt as to whether the significance of a term is primarily merely a surname, the USPTO must resolve the doubt in favor of the applicant. Id. Conclusion In view of the foregoing, Applicant respectfully requests that the refusals under Section 2(e)(4) of the Trademark Act of 1946 be withdrawn and the mark be allowed for publication on the Principal Register. |
|
| ATTORNEY INFORMATION (current) | |
| NAME | Lora J. Graentzdoerffer |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | MASCO CORPORATION |
| STREET | 17450 COLLEGE PARKWAY |
| CITY | LIVONIA |
| STATE | Michigan |
| POSTAL CODE | 48152 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 313-792-6431 |
| FAX | 313-792-6797 |
| trademarks@mascohq.com | |
| DOCKET/REFERENCE NUMBER | 330-3151-T |
| ATTORNEY INFORMATION (proposed) | |
| NAME | Lora J. Graentzdoerffer |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | MASCO CORPORATION |
| STREET | 17450 COLLEGE PARKWAY |
| CITY | LIVONIA |
| STATE | Michigan |
| POSTAL CODE | 48152 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 313-792-6431 |
| FAX | 313-792-6797 |
| trademarks@mascohq.com | |
| DOCKET/REFERENCE NUMBER | 330-3151-T |
| OTHER APPOINTED ATTORNEY | Nirav D. Parikh, Edgar A. Zarins, Kirk W. Rudolph |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | LORA J. GRAENTZDOERFFER |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarks@mascohq.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | brenda_garrett@mascohq.com |
| DOCKET/REFERENCE NUMBER | 330-3151-T |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Lora J. Graentzdoerffer |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarks@mascohq.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 330-3151-T |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /LORA J. GRAENTZDOERFFER/ |
| SIGNATORY'S NAME | LORA J. GRAENTZDOERFFER |
| SIGNATORY'S POSITION | Attorney of Record, Michigan Bar Member |
| SIGNATORY'S PHONE NUMBER | 313-792-6431 |
| DATE SIGNED | 03/02/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Mar 02 12:40:18 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.X-202 00302124018427901-8846056 3-7109586c64072d38af449cf 75a876843ee54af017af3e365 34956c2f82cadfcaf22-N/A-N /A-20200302123759277348 |
| 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) |
The Examining Attorney has refused registration Applicant’s mark CLEMENS based on a finding that Applicant’s mark CLEMENS is primarily merely a surname. For the following reasons, the refusal is respectfully traversed and reconsideration is requested in view of the following comments.
The Examining Attorney bases the refusal on the fact that the term has no other known meaning. Nevertheless, only 26,416 instances of the term used as a surname were found by the Examining Attorney making it an extremely rare surname. Registration should not be refused simply because the mark has no other meanings. The purpose behind prohibiting the registration of surnames is not to protect the public from exposure to surnames but rather to keep surnames available for people who might wish to use their surnames in their businesses. If the surname is rare, it is also unlikely that someone other than the applicant will want to use the surname in connection with plumbing products. In view of the rarity of the term as a surname, it cannot be considered primarily a surname. Accordingly, registration of the current mark should be allowed.
The burden of establishing a prima facie case that a term is primarily merely a surname falls on the Examining Attorney. In re Etablissements Darty et Fils, 759 F.2d 15, 225 U.S.P.Q. 652, 653 (Fed. Cir. 1985). In addition, " [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 reviews five factors when determining if a name 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).
The Examining Attorney has provided evidence from the LEXIS® surname database for only 26,416 entries for CLEMENS to establish “the surname significance of the surname CLEMENS”. The evidence that CLEMENS appears only 26,416 times in the United States does not establish that CLEMENS is primarily merely a surname.
As to the surname significance of the term CLEMENS, similar to Board decision in In re Joint-Stock Company “Baik”, 84 USPQ2d 1921 (TTAB 2007), the evidence submitted by the Examining Attorney reflects that the term CLEMENS is an “extremely rare surname.” As the Board explained, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses. “If the surname is extremely rare, it is also extremely unlikely that someone other than applicant will want to use the surname for the same or related goods or services as that of applicant.”.
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 U.S.P.Q.2d 1070, 1071. In this case, the Applicant respectfully submits that no one connected with the Applicant has the surname CLEMENS or any literal equivalents.
The third factor the Board considers when deciding whether a mark is primarily merely a surname is whether the term has any recognized meaning other than as a surname. The absence of a dictionary definition for “CLEMENS” does not provide any real support for the refusal because, as the Board has held:
While a significant non-surname meaning usually helps the position of an applicant, we find that the converse (i.e., a determination that the involved term does not have any non-surname meaning) does not help significantly the position of the Trademark Examining Attorney.
Amlin, supra. See also In re Garan Inc., 3 U.S.P.Q.2d 1537, 1539 (T.T.A.B. 1987) (“That there are no other meanings of the name in the English language will not support refusal of registration of the surname under the ‘primarily merely a surname’ statutory language unless the average member of the purchasing public would, upon seeing it used as a trademark, recognize it as a surname.”). This collection of evidence indicates that the term is not merely a surname.
The fourth factor the Trademark Trial and Appeal Board has identified is whether the mark has the “look and feel” of a surname. 37 U.S.P.Q.2d 1332 at 1334. While the determination as to whether a term has the “look and feel” of a surname is decidedly subjective, it is readily apparent that CLEMENS unlike other terms which look and sound like surnames, does not have the structure and pronunciation of a surname. With the technology available today, almost any term can be found as a surname on a directory yet that should not be a primary indicator. Indeed, CLEMENS falls with the category of words that do not have the appearance of surnames.
The final factor the Board takes into consideration is whether the stylization of lettering is distinctive enough to create a separate commercial impression. 37 U.S.P.Q.2d 1332 at 1334. Where the mark is in standard characters, it is unnecessary to consider the fifth factor. In re Yeley, 85 U.S.P.Q.2d 1150, 1151 (T.T.A.B. 2007).
In view of the above arguments, Applicant believes that the proposed mark is entitled to registration on the Principal Register. However, if there is any doubt as to whether the significance of a term is primarily merely a surname, the USPTO must resolve the doubt in favor of the applicant. Id.
Conclusion
In view of the foregoing, Applicant respectfully requests that the refusals under Section 2(e)(4) of the Trademark Act of 1946 be withdrawn and the mark be allowed for publication on the Principal Register.