| 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 | 88503430 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88503430/mark.png |
| LITERAL ELEMENT | RIEDEL SPEY |
| 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’S ARGUMENTS IN RESPONSE TO THE EXAMINER’S REFUSAL TO REGISTER THE MARK RIEDEL SPEY ON THE GROUNDS THAT RIEDEL IS PRIMARILY MERELY A SURNAME
The Examiner refuses to register RIEDEL SPEY on the grounds that RIEDEL is primarily merely a surname. The Examiner notes that Riedel is a fairly common surname in the United States and that the owners of the Applicant have the surname Riedel. Nonetheless Applicant takes issue with the Examiner’s argument that Riedel is primarily merely a surname. Where a mark, even if it is a surname, has been used in US commerce for at least five years, continuously and without interruption, to identify the goods described in the application, the mark is not primarily merely a surname. Where the mark has acquired distinctiveness and developed secondary meaning in the US marketplace so as to identify the Applicant as the source or origin of the goods, the mark is not primarily merely a surname. Under Section 2(f) of the US Trademark Statute, Applicant’s mark RIEDEL SPEY should be registerable on the Principal Register. Applicant has used its mark RIEDEL in US commerce to identify its beverageware sold in the United States for more than five years, continuously and without interruption, and so the mark RIEDEL has acquired distinctiveness and developed secondary meaning in the US marketplace. To establish that RIEDEL is not primarily merely a surname with respect to beverageware, Applicant has asserted common ownership of US Trademark Registration 2,216,012 for the mark RIEDEL covering inter alia, “crystal decanters with and without stoppers” which of course are beverageware and US Trademark Registration 3,020,409 for the mark RIEDEL covering “handmade and machine made drinking glasses and stemware for household and professional use.” In view of the above the Examiner should no longer refuse registration of the mark RIEDEL SPEY on the grounds that RIEDEL is primarily merely a surname.
APPLICANT’S EXPLANATION OF THE SIGNIFICANCE OF THE WORD SPEY
The word SPEY has no meaning or significance in the trade or industry in which Applicant’s goods are manufactured or provided, any meaning or significance as applied to Applicant’s goods, and is not a “term of art” within Applicant’s industry. The Spey River is an area in Scotland in which a good amount of single malt scotch whiskey is distilled. The Spey River area is well-known as an area where single malt scotch is produced. However, the Spey River area is not known as a place where beverage glassware is produced. The Applicant’s RIEDEL SPEY beverageware is not produced in the Spey River area of Scotland; it is produced in Germany. |
|
| ADDITIONAL STATEMENTS SECTION | |
| SIGNIFICANCE OF MARK | SPEY appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. |
| SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s) | RIEDEL has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 2,216,012; 3,020,409 and others |
| ATTORNEY SECTION (current) | |
| NAME | JONATHAN MYERS |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | LUCAS & MERCANTI, LLP |
| INTERNAL ADDRESS | 21ST FLOOR |
| STREET | 30 BROAD STREET |
| CITY | NEW YORK |
| STATE | New York |
| POSTAL CODE | 10004 |
| COUNTRY | US |
| PHONE | 212-661-8000 |
| FAX | 212-661-8002 |
| info@lmiplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | RIPJ-1033-TM |
| ATTORNEY SECTION (proposed) | |
| NAME | JONATHAN MYERS |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | LUCAS & MERCANTI, LLP |
| INTERNAL ADDRESS | 21ST FLOOR |
| STREET | 30 BROAD STREET |
| CITY | NEW YORK |
| STATE | New York |
| POSTAL CODE | 10004 |
| COUNTRY | United States |
| PHONE | 212-661-8000 |
| FAX | 212-661-8002 |
| info@lmiplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | RIPJ-1033-TM |
| CORRESPONDENCE SECTION (current) | |
| NAME | JONATHAN MYERS |
| FIRM NAME | LUCAS & MERCANTI, LLP |
| INTERNAL ADDRESS | 21ST FLOOR |
| STREET | 30 BROAD STREET |
| CITY | NEW YORK |
| STATE | New York |
| POSTAL CODE | 10004 |
| COUNTRY | US |
| PHONE | 212-661-8000 |
| FAX | 212-661-8002 |
| info@lmiplaw.com; JMmail@lmiplaw.com; lberrios@lmiplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | RIPJ-1033-TM |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | JONATHAN MYERS |
| FIRM NAME | LUCAS & MERCANTI, LLP |
| INTERNAL ADDRESS | 21ST FLOOR |
| STREET | 30 BROAD STREET |
| CITY | NEW YORK |
| STATE | New York |
| POSTAL CODE | 10004 |
| COUNTRY | United States |
| PHONE | 212-661-8000 |
| FAX | 212-661-8002 |
| info@lmiplaw.com; JMmail@lmiplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | RIPJ-1033-TM |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /Jonathan Myers/ |
| SIGNATORY'S NAME | Jonathan Myers |
| SIGNATORY'S POSITION | Attorney for Applicant, NY Bar |
| SIGNATORY'S PHONE NUMBER | 212.661.8000 |
| DATE SIGNED | 08/29/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Aug 29 11:17:49 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20190829111749152585-8850 3430-610a5edc330d028e9783 dea2278fdce4129da50801822 7db9415ecb2f1a6594e9-N/A- N/A-20190829110513373563 |
| 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’S ARGUMENTS IN RESPONSE TO THE EXAMINER’S REFUSAL TO REGISTER THE MARK RIEDEL SPEY ON THE GROUNDS THAT RIEDEL IS PRIMARILY MERELY A SURNAME
The Examiner refuses to register RIEDEL SPEY on the grounds that RIEDEL is primarily merely a surname. The Examiner notes that Riedel is a fairly common surname in the United States and that the owners of the Applicant have the surname Riedel. Nonetheless Applicant takes issue with the Examiner’s argument that Riedel is primarily merely a surname. Where a mark, even if it is a surname, has been used in US commerce for at least five years, continuously and without interruption, to identify the goods described in the application, the mark is not primarily merely a surname. Where the mark has acquired distinctiveness and developed secondary meaning in the US marketplace so as to identify the Applicant as the source or origin of the goods, the mark is not primarily merely a surname. Under Section 2(f) of the US Trademark Statute, Applicant’s mark RIEDEL SPEY should be registerable on the Principal Register. Applicant has used its mark RIEDEL in US commerce to identify its beverageware sold in the United States for more than five years, continuously and without interruption, and so the mark RIEDEL has acquired distinctiveness and developed secondary meaning in the US marketplace.
To establish that RIEDEL is not primarily merely a surname with respect to beverageware, Applicant has asserted common ownership of US Trademark Registration 2,216,012 for the mark RIEDEL covering inter alia, “crystal decanters with and without stoppers” which of course are beverageware and US Trademark Registration 3,020,409 for the mark RIEDEL covering “handmade and machine made drinking glasses and stemware for household and professional use.” In view of the above the Examiner should no longer refuse registration of the mark RIEDEL SPEY on the grounds that RIEDEL is primarily merely a surname.
APPLICANT’S EXPLANATION OF THE SIGNIFICANCE OF THE WORD SPEY
The word SPEY has no meaning or significance in the trade or industry in which Applicant’s goods are manufactured or provided, any meaning or significance as applied to Applicant’s goods, and is not a “term of art” within Applicant’s industry. The Spey River is an area in Scotland in which a good amount of single malt scotch whiskey is distilled. The Spey River area is well-known as an area where single malt scotch is produced. However, the Spey River area is not known as a place where beverage glassware is produced. The Applicant’s RIEDEL SPEY beverageware is not produced in the Spey River area of Scotland; it is produced in Germany.