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pto form 1957 (rev 9/2005) omb no. 0651-0050 (exp. 07/31 ... · 9.01.2013  · connelly is the name...

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  • PTO Form 1957 (Rev 9/2005) OMB No. 0651-0050 (Exp. 07/31 ... · 9.01.2013  · CONNELLY is the name of towns in New York (see attached Exhibit A) and Minnesota (see attached Exhibit
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PTO Form 1957 (Rev 9/2005) OMB No. 0651-0050 (Exp. 07/31/2017) Response to Office Action The table below presents the data as entered. Input Field Entered SERIAL NUMBER 85583934 LAW OFFICE ASSIGNED LAW OFFICE 114 MARK SECTION MARK http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=85583934 LITERAL ELEMENT CONNELLY 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) On July 9, 2012, the Examining Attorney issued an initial refusal to register under Section 2(e)(4) of the Trademark Act, alleging that the mark in question is primarily merely a surname. Applicant respectfully objects to the Examiner’s determination for the following reasons. Applicant respectfully submits that CONNELLY has primary significance other than as a surname and that the purchasing public would not perceive the Applicant’s mark as primarily merely a surname. First, the use of “Connelly” as a surname is rare and minimal, and the Examining Attorney has only provided de minimus evidence of surname significance. “The rarity of a surname is a factor to be considered in determining whether a term is primarily merely a surname. TMEP §1211.01(a)(v); see also In re Benthin Management GmBH, 37 U.S.P.Q. 2d 1332 (T.T.A.B. 1995) (holding that the fact that BENTHIN was a rare surname weighed against a finding that the term would be perceived as primarily merely a surname); In re Sava Research Corp., 32 U.S.P.Q. 2d 1380 (T.T.A.B. 1994) (concluding that SAVA was not primarily merely a surname because the term had another meaning, there was no evidence that the term was the surname of anyone connected with the applicant, and the term’s use as a surname was rare). The evidence attached by the Examining Attorney does not support a finding of more than rare use of “Connelly” as a surname in the United States. The Examining Attorney included a list from www.wikipedia.org of 53 people, ostensibly with the surname “Connelly.” However, many of the names were under different spellings (i.e., “Connolly,” or “Connely”) and a large number of the names were people from countries other than the United States. Thus, the Examining Attorney has not established a prima facie case that the mark CONNELLY is primarily merely a surname to consumers in the United States. Second, the term CONNELLY was not selected in order to suggest or connote any surname significance. The mark CONNELLY is not part of Applicant’s name and, to the Applicant’s knowledge, is not the surname of any individual associated with the Applicant, including but not limited to the officers or founders of the applicant. See TMEP §1211.02(b)(iv). Third, the term CONNELLY conveys other meanings than a surname. Contrary to the Examining Attorney’s assertion, the primary meaning of Applicant’s mark as perceived by the purchasing public is not as a surname. Rather, the term CONNELLY is equally significant as a geographic term. CONNELLY is the name of towns in New York (see attached Exhibit A) and Minnesota (see attached Exhibit B). In North Carolina, CONNELLY is a geographic reference to Connelly Springs (see attached Exhibit C) as well as Connelly Mountain (see attached Exhibit D). The purchasing public is equally likely to think of CONNELLY as having geographic significance as surname significance. Accordingly, the refusal should be withdrawn. See. e.g., In re Colt Indus. Operating Corp., 195 U.S.P.Q. 75 (T.T.A.B. 1977) (FAIRBANKS held not primarily merely a surname because the geographical significance of the mark was determined to be just as dominant as its surname significance). In addition to geographic and surname significance, CONNELLY is also a given name or first name. The popular website

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  • PTO Form 1957 (Rev 9/2005)

    OMB No. 0651-0050 (Exp. 07/31/2017)

    Response to Office Action

    The table below presents the data as entered.

    Input Field Entered

    SERIAL NUMBER 85583934

    LAW OFFICE ASSIGNED LAW OFFICE 114

    MARK SECTION

    MARK http://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=85583934

    LITERAL ELEMENT CONNELLY

    STANDARD CHARACTERS YES

    USPTO-GENERATED IMAGE YES

    MARK STATEMENTThe mark consists of standard characters, without claim to any particular font style,size or color.

    ARGUMENT(S)

    On July 9, 2012, the Examining Attorney issued an initial refusal to register under Section 2(e)(4) of the Trademark Act, allegingthat the mark in question is primarily merely a surname. Applicant respectfully objects to the Examiner’s determination for thefollowing reasons.

    Applicant respectfully submits that CONNELLY has primary significance other than as a surname and that the purchasing publicwould not perceive the Applicant’s mark as primarily merely a surname.

    First, the use of “Connelly” as a surname is rare and minimal, and the Examining Attorney has only provided de minimusevidence of surname significance. “The rarity of a surname is a factor to be considered in determining whether a term isprimarily merely a surname. TMEP §1211.01(a)(v); see also In re Benthin Management GmBH, 37 U.S.P.Q. 2d 1332 (T.T.A.B.1995) (holding that the fact that BENTHIN was a rare surname weighed against a finding that the term would be perceived asprimarily merely a surname); In re Sava Research Corp., 32 U.S.P.Q. 2d 1380 (T.T.A.B. 1994) (concluding that SAVA was notprimarily merely a surname because the term had another meaning, there was no evidence that the term was the surname ofanyone connected with the applicant, and the term’s use as a surname was rare).

    The evidence attached by the Examining Attorney does not support a finding of more than rare use of “Connelly” as a surnamein the United States. The Examining Attorney included a list from www.wikipedia.org of 53 people, ostensibly with the surname“Connelly.” However, many of the names were under different spellings (i.e., “Connolly,” or “Connely”) and a large number ofthe names were people from countries other than the United States. Thus, the Examining Attorney has not established a primafacie case that the mark CONNELLY is primarily merely a surname to consumers in the United States.

    Second, the term CONNELLY was not selected in order to suggest or connote any surname significance. The mark CONNELLYis not part of Applicant’s name and, to the Applicant’s knowledge, is not the surname of any individual associated with theApplicant, including but not limited to the officers or founders of the applicant. See TMEP §1211.02(b)(iv).

    Third, the term CONNELLY conveys other meanings than a surname. Contrary to the Examining Attorney’s assertion, theprimary meaning of Applicant’s mark as perceived by the purchasing public is not as a surname. Rather, the term CONNELLYis equally significant as a geographic term. CONNELLY is the name of towns in New York (see attached Exhibit A) andMinnesota (see attached Exhibit B). In North Carolina, CONNELLY is a geographic reference to Connelly Springs (see attachedExhibit C) as well as Connelly Mountain (see attached Exhibit D). The purchasing public is equally likely to think of CONNELLYas having geographic significance as surname significance. Accordingly, the refusal should be withdrawn. See. e.g., In re ColtIndus. Operating Corp., 195 U.S.P.Q. 75 (T.T.A.B. 1977) (FAIRBANKS held not primarily merely a surname because thegeographical significance of the mark was determined to be just as dominant as its surname significance).

    In addition to geographic and surname significance, CONNELLY is also a given name or first name. The popular website

  • www.babycenter.com lists Connelly as a name that has seen varying degrees of popularity over the past 15 years. See attachedExhibit E.

    In view of the above, Applicant submits that CONNELLY is not primarily merely a surname and respectfully requests that theExamining Attorney withdraw this refusal and approve the mark for publication.

    EVIDENCE SECTION

    EVIDENCE FILE NAME(S)

    ORIGINAL PDF FILE evi_20422722538-182900341_._Exs_A-E_to_ROA.pdf

    CONVERTED PDF FILE(S) (10 pages)

    \\TICRS\EXPORT16\IMAGEOUT16\855\839\85583934\xml4\ROA0002.JPG

    \\TICRS\EXPORT16\IMAGEOUT16\855\839\85583934\xml4\ROA0003.JPG

    \\TICRS\EXPORT16\IMAGEOUT16\855\839\85583934\xml4\ROA0004.JPG

    \\TICRS\EXPORT16\IMAGEOUT16\855\839\85583934\xml4\ROA0005.JPG

    \\TICRS\EXPORT16\IMAGEOUT16\855\839\85583934\xml4\ROA0006.JPG

    \\TICRS\EXPORT16\IMAGEOUT16\855\839\85583934\xml4\ROA0007.JPG

    \\TICRS\EXPORT16\IMAGEOUT16\855\839\85583934\xml4\ROA0008.JPG

    \\TICRS\EXPORT16\IMAGEOUT16\855\839\85583934\xml4\ROA0009.JPG

    \\TICRS\EXPORT16\IMAGEOUT16\855\839\85583934\xml4\ROA0010.JPG

    \\TICRS\EXPORT16\IMAGEOUT16\855\839\85583934\xml4\ROA0011.JPG

    DESCRIPTION OF EVIDENCE FILEEvidence of geographic and first name/given name significance of the term"Connelly."

    CORRESPONDENCE SECTION

    ORIGINAL ADDRESS

    JENNIFER T. SOPILLSBURY WINTHROP SHAW PITTMAN LLP725 S FIGUEROA ST STE 2800LOS ANGELESCalifornia (CA)US90017-5406

    NEW CORRESPONDENCE SECTION

    NAME JENNIFER T. SO

    FIRM NAME PILLSBURY WINTHROP SHAW PITTMAN LLP

    STREET 725 S FIGUEROA ST STE 2800

    CITY LOS ANGELES

    STATE California

    ZIP/POSTAL CODE 90017-5406

    COUNTRY United States

    PHONE 213-488-7100

    FAX 213-536-2262

    [email protected];[email protected];[email protected]; [email protected];[email protected]

    AUTHORIZED EMAIL COMMUNICATION Yes

    ../evi_20422722538-182900341_._Exs_A-E_to_ROA.pdf../ROA0002.JPG../ROA0003.JPG../ROA0004.JPG../ROA0005.JPG../ROA0006.JPG../ROA0007.JPG../ROA0008.JPG../ROA0009.JPG../ROA0010.JPG../ROA0011.JPG

  • SIGNATURE SECTION

    RESPONSE SIGNATURE /Marcus Peterson/

    SIGNATORY'S NAME Marcus Peterson

    SIGNATORY'S POSITION Attorney of record, Member of the California Bar

    SIGNATORY'S PHONE NUMBER 213-488-7410

    DATE SIGNED 01/09/2013

    AUTHORIZED SIGNATORY YES

    FILING INFORMATION SECTION

    SUBMIT DATE Wed Jan 09 19:35:00 EST 2013

    TEAS STAMP

    USPTO/ROA-XXX.XXX.XXX.XX-20130109193500893014-85583934-490c689886aac945fedadee3bcd31a3d4-N/A-N/A-20130109182900341763

    PTO Form 1957 (Rev 9/2005)

    OMB No. 0651-0050 (Exp. 07/31/2017)

    Response to Office ActionTo the Commissioner for Trademarks:

    Application serial no. 85583934 CONNELLY(Standard Characters, seehttp://tess2.uspto.gov/ImageAgent/ImageAgentProxy?getImage=85583934) has been amended as follows:

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

    On July 9, 2012, the Examining Attorney issued an initial refusal to register under Section 2(e)(4) of the Trademark Act, allegingthat the mark in question is primarily merely a surname. Applicant respectfully objects to the Examiner’s determination for thefollowing reasons.

    Applicant respectfully submits that CONNELLY has primary significance other than as a surname and that the purchasing publicwould not perceive the Applicant’s mark as primarily merely a surname.

    First, the use of “Connelly” as a surname is rare and minimal, and the Examining Attorney has only provided de minimus evidenceof surname significance. “The rarity of a surname is a factor to be considered in determining whether a term is primarily merely asurname. TMEP §1211.01(a)(v); see also In re Benthin Management GmBH, 37 U.S.P.Q. 2d 1332 (T.T.A.B. 1995) (holding that thefact that BENTHIN was a rare surname weighed against a finding that the term would be perceived as primarily merely a surname);In re Sava Research Corp., 32 U.S.P.Q. 2d 1380 (T.T.A.B. 1994) (concluding that SAVA was not primarily merely a surnamebecause the term had another meaning, there was no evidence that the term was the surname of anyone connected with theapplicant, and the term’s use as a surname was rare).

    The evidence attached by the Examining Attorney does not support a finding of more than rare use of “Connelly” as a surname inthe United States. The Examining Attorney included a list from www.wikipedia.org of 53 people, ostensibly with the surname“Connelly.” However, many of the names were under different spellings (i.e., “Connolly,” or “Connely”) and a large number ofthe names were people from countries other than the United States. Thus, the Examining Attorney has not established a primafacie case that the mark CONNELLY is primarily merely a surname to consumers in the United States.

    Second, the term CONNELLY was not selected in order to suggest or connote any surname significance. The mark CONNELLY isnot part of Applicant’s name and, to the Applicant’s knowledge, is not the surname of any individual associated with the Applicant,including but not limited to the officers or founders of the applicant. See TMEP §1211.02(b)(iv).

  • Third, the term CONNELLY conveys other meanings than a surname. Contrary to the Examining Attorney’s assertion, the primarymeaning of Applicant’s mark as perceived by the purchasing public is not as a surname. Rather, the term CONNELLY is equallysignificant as a geographic term. CONNELLY is the name of towns in New York (see attached Exhibit A) and Minnesota (seeattached Exhibit B). In North Carolina, CONNELLY is a geographic reference to Connelly Springs (see attached Exhibit C) aswell as Connelly Mountain (see attached Exhibit D). The purchasing public is equally likely to think of CONNELLY ashaving geographic significance as surname significance. Accordingly, the refusal should be withdrawn. See. e.g., In re ColtIndus. Operating Corp., 195 U.S.P.Q. 75 (T.T.A.B. 1977) (FAIRBANKS held not primarily merely a surname because thegeographical significance of the mark was determined to be just as dominant as its surname significance).

    In addition to geographic and surname significance, CONNELLY is also a given name or first name. The popular websitewww.babycenter.com lists Connelly as a name that has seen varying degrees of popularity over the past 15 years. See attachedExhibit E.

    In view of the above, Applicant submits that CONNELLY is not primarily merely a surname and respectfully requests that theExamining Attorney withdraw this refusal and approve the mark for publication.

    EVIDENCEEvidence in the nature of Evidence of geographic and first name/given name significance of the term "Connelly." has been attached.Original PDF file:evi_20422722538-182900341_._Exs_A-E_to_ROA.pdfConverted PDF file(s) ( 10 pages)Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10

    CORRESPONDENCE ADDRESS CHANGEApplicant proposes to amend the following:Current:JENNIFER T. SOPILLSBURY WINTHROP SHAW PITTMAN LLP725 S FIGUEROA ST STE 2800LOS ANGELESCalifornia (CA)US90017-5406

    Proposed:JENNIFER T. SO of PILLSBURY WINTHROP SHAW PITTMAN LLP, having an address of725 S FIGUEROA ST STE 2800 LOS ANGELES, California 90017-5406United [email protected];[email protected]; [email protected]; [email protected];[email protected]

    SIGNATURE(S)Response SignatureSignature: /Marcus Peterson/ Date: 01/09/2013Signatory's Name: Marcus PetersonSignatory's Position: Attorney of record, Member of the California Bar

    ../evi_20422722538-182900341_._Exs_A-E_to_ROA.pdf../ROA0002.JPG../ROA0003.JPG../ROA0004.JPG../ROA0005.JPG../ROA0006.JPG../ROA0007.JPG../ROA0008.JPG../ROA0009.JPG../ROA0010.JPG../ROA0011.JPG

  • Signatory's Phone Number: 213-488-7410

    The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, whichincludes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or anassociate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent notcurrently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrentlyfiling a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative towithdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney orCanadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

    Mailing Address: JENNIFER T. SO PILLSBURY WINTHROP SHAW PITTMAN LLP 725 S FIGUEROA ST STE 2800 LOS ANGELES, California 90017-5406 Serial Number: 85583934Internet Transmission Date: Wed Jan 09 19:35:00 EST 2013TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-20130109193500893014-85583934-490c689886aac945fedadee3bcd31a3d4-N/A-N/A-20130109182900341763

  • Response to Office Action - 2013-01-09


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