UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`(cid:160) (cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160) (cid:160) (cid:160)
`(cid:160)(cid:160)(cid:160)
`
`U.S. APPLICATION SERIAL NO. (cid:160) 85346781
`
`(cid:160)M
`
`ARK: KEATON
`
`CORRESPONDENT ADDRESS:
`(cid:160)(cid:160)
`(cid:160)(cid:160) (cid:160) (cid:160) EDGAR A. ZARINS
`(cid:160)(cid:160)
`(cid:160)(cid:160) (cid:160) (cid:160) MASCO CORPORATION
`(cid:160) (cid:160) (cid:160)(cid:160)(cid:160)(cid:160) 21001 VAN BORN RD
`(cid:160) (cid:160) (cid:160)(cid:160) (cid:160) (cid:160) TAYLOR, MI 48180-1300
`(cid:160)(cid:160)(cid:160)(cid:160)
`APPLICANT: Brasstech, Inc.
`
`*85346781*
`
`CLICK HERE TO RESPOND TO THIS LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`(cid:160)(cid:160)(cid:160)
`
`(cid:160) (cid:160)(cid:160)
`CORRESPONDENT’S REFERENCE/DOCKET NO :(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`CORRESPONDENT E-MAIL ADDRESS:(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`(cid:160) 330-3083-T
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
`
`OFFICE ACTION
`
`(cid:160)I
`
`SSUE/MAILING DATE:
`
`THIS IS A FINAL ACTION.
`
`This Office action is in response to applicant’s communication filed on July 14, 2014.
`
`SECTION 2(e)(4) FINAL REFUSAL – PRIMARILY MERELY A SURNAME
`Registration was refused because the applied-for mark is primarily merely a surname.(cid:160) Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see
`TMEP §1211.(cid:160) The primary significance of the mark to the purchasing public determines whether a term is primarily merely a surname.(cid:160) In re
`Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009);
`see TMEP §§1211, 1211.01.
`
`(cid:160)A
`
`pplicant’s arguments have been considered and found unpersuasive. (cid:160) The refusal under Trademark Act Section 2(e)(4) is now made FINAL
`for the reasons set forth below.(cid:160) See 15 U.S.C. §1052(e)(4); 37 C.F.R. §2.64(a).
`
`(cid:160)T
`
`he following five factors are used to determine whether a mark is primarily merely a surname:
`
`(1) Whether the surname is rare;
`
`(2) Whether anyone connected with applicant uses the term as a surname;
`
`(3) Whether the term has any recognized meaning other than as a surname;
`
`(4) Whether the term has the structure and pronunciation of a surname; and
`
`(5) Whether the term is sufficiently stylized to remove its primary significance from that of a surname.
`
`(cid:160)S
`
`ee In re Binion, 93 USPQ2d 1531, 1537 (TTAB 2009); In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995); TMEP
`§1211.01.
`
`(cid:160)P
`
`lease see the attached evidence from http://www.ancestry.com/, establishing the surname significance of the surname KEATON with the
`following numbers of records:(cid:160)(cid:160)
`43,774 Birth, Marriage, and Deaths
`
`(cid:160)
`(cid:160)
`(cid:160)(cid:160)
`(cid:160)
`(cid:160)
`(cid:160)
`(cid:160)
`(cid:160)
`(cid:160)
`(cid:160)
`

`

`6,462 Military Records
`1,142 Immigration Records
`24,666 Census and Voter Lists
`
`(cid:160)T
`
`he evidence from www.whitepages.com shows the applied-for mark appearing one hundred times as a surname in a nationwide telephone
`directory of names.
`
`(cid:160)T
`
`he issue of determining whether a surname is common or rare is not determined solely by comparing the number of listings of the surname in a
`computerized database with the total number of listings in that database, because even the most common surname would represent only a small
`fraction of such a database.(cid:160) Rather, if a surname appears routinely in news reports, articles and other media as to be broadly exposed to the
`general public, then such surname is not rare and would be perceived by the public as primarily merely a surname.(cid:160) In re Gregory, 70 USPQ2d
`1792, 1795 (TTAB 2004); see TMEP §1211.01(a)(v).(cid:160) See attached websites regarding famous people with the surname KEATON including
`
`http://www.imdb.com/name/nm0000474/
`
`(cid:160)h
`
`(cid:160)h
`
`ttp://en.wikipedia.org/wiki/Buster_Keaton
`
`ttp://variety.com/2014/film/news/diane-keaton-to-receive-zurich-film-festivals-golden-icon-award-1201285114/#.
`
`(cid:160)T
`
`he applicant argues that “for a term to be merely a surname, that can be its only significance.” (cid:160) The applicant references the alternative
`meanings of the term previously submitted.(cid:160) However, the existence of other non-surname meanings of a mark does not preclude the mark from
`being held primarily merely a surname.(cid:160) Mitchell Miller, P.C. v. Miller, 105 USPQ2d 1615, 1620-21 (TTAB 2013); see In re Harris-Intertype
`Corp., 518 F.2d 629, 631, 186 USPQ2d 238, 239 (C.C.P.A. 1975); In re Hamilton Pharms. Ltd., 27 USPQ2d 1939, 1942 (TTAB 1993).(cid:160) The
`issue is not whether a mark that has surname significance might also have a non-surname significance, but whether, in the context of an
`applicant’s goods or services, the non-surname significance is the mark’s primary significance to the purchasing public.(cid:160) Mitchell Miller, P.C.
`v. Miller, 105 USPQ2d at 1621; see In re Harris-Intertype Corp., 518 F.2d at 631, 186 USPQ2d at 239; In re Hamilton Pharms. Ltd., 27 USPQ2d
`at 1942.
`
`(cid:160)T
`
`he fact that a term looks and sounds like a surname may contribute to a finding that the primary significance of the term is that of a surname.(cid:160) In
`re Giger, 78 USPQ2d 1405, 1409 (TTAB 2006); In re Gregory, 70 USPQ2d 1792, 1796 (TTAB 2004); In re Industrie Pirelli Societa per Azioni,
`9 USPQ2d 1564, 1566 (TTAB 1988); In re Petrin Corp., 231 USPQ 902, 904 (TTAB 1986); see TMEP §1211.01(a)(vi).
`
`(cid:160)A
`
`gain, a mark deemed primarily merely a surname may be registered on the Principal Register under Trademark Act Section 2(f) by satisfying
`one of the following:
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`(cid:160)T
`
`(1) Submit a claim of ownership of one or more prior registrations on the Principal Register for a mark that is the same as the mark in the
`application and for the same or related goods and/or services.(cid:160) 37 C.F.R. §2.41(b); TMEP §§1212, 1212.04.(cid:160) The following wording
`is suggested:(cid:160) “The mark has become distinctive under Section 2(f) of the goods or services as evidenced by ownership of U.S.
`Registration No(s). {insert number} on the Principal Register for the same mark for the same or related goods and/or
`services.”(cid:160) TMEP §1212.04(e).;
`
`(2) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:(cid:160) “The mark has become
`distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at
`least the five years immediately before the date of this statement.”(cid:160) 37 C.F.R. §2.41(b); TMEP §1212.05(d); see 37 C.F.R.
`§2.193(e)(1).; or
`
`(3) Submit actual evidence of acquired distinctiveness.(cid:160) 37 C.F.R. §2.41(a); TMEP §1212.06.(cid:160) Such evidence may include the following:(cid:160)
`examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark and/or service mark
`in the United States; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the
`applied-for mark as a trademark and/or service mark; and any other evidence that establishes recognition of the applied-for mark as a
`source-identifier for the goods and/or services.(cid:160) See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re
`Instant Transactions Corp. of Am., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.
`
`rademark Act Section 2(f), 15 U.S.C. §1052(f); see 37 C.F.R. §2.41; TMEP §§1211, 1212.
`
`(cid:160)I
`
`f applicant cannot satisfy one of the above, applicant can amend the application to seek registration on the Supplemental Register.(cid:160) Trademark
`Act Section 23, 15 U.S.C. §1091; see 37 C.F.R. §§2.47, 2.75(a).
`
`(cid:160)A
`
`ccordingly, the refusal to register the proposed mark under Section 2(e)(4) is made final.
`
`Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.(cid:160) 15 U.S.C.
`
`(cid:160)
`(cid:160)
`

`

`§1062(b); 37 C.F.R. §2.65(a).(cid:160) Applicant may respond by providing one or both of the following:
`
`(1)(cid:160) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
`
`(2)(cid:160) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
`
`(cid:160)3
`
`7 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
`
`(cid:160)I
`
`n certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review
`procedural issues.(cid:160) 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable
`matters).(cid:160) The petition fee is $100.(cid:160) 37 C.F.R. §2.6(a)(15).
`
`/Tracy Cross/
`Examining Attorney
`Law Office 109
`(571) 272-9271
`Tracy.Cross@uspto.gov
`
`(cid:160)T
`
`O RESPOND TO THIS LETTER: (cid:160) Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. (cid:160) Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.(cid:160)
`For technical assistance with online forms, e-mail TEAS@uspto.gov.(cid:160) For questions about the Office action itself, please contact the assigned
`trademark examining attorney.(cid:160) E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`(cid:160)A
`
`ll informal e-mail communications relevant to this application will be placed in the official application record.
`
`(cid:160)W
`
`HO MUST SIGN THE RESPONSE:(cid:160) It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).(cid:160) If an applicant is represented by an attorney, the attorney must sign the
`
`response.(cid:160)(cid:160)
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION: (cid:160) To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/. (cid:160) Please keep a copy of the TSDR status screen. (cid:160) If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. (cid:160) For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`(cid:160)T
`
`O UPDATE CORRESPONDENCE/E-MAIL ADDRESS:(cid:160) Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
`(cid:160)
`(cid:160)
`(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)
`

`

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`.Bu$t<=r.Keat0n
`From Wikipedia, the free encyclopedia
`
`Joseph Frank "Buster" Keaton (October 4, 1695 — February 1,
`1966) was an American actor, vaudevillian, comedian, filmmaker,
`
`stunt perfonner, and writeaim He was best known for his silent films, in
`which his trademark was physical comedy with a consistently stoic,
`deadpan expression, earning him the nickname "The Great Stone
`Face".[2]
`
`Buster Keaton (his lifelong stage name) was recognized as the
`
`seventh—greatest director by Entertainment Weelrlyw In 1999, the
`American Film institute ranked Keaton the 21st—greatest male star. [43
`Critic Roger Ebert wrote of Keaton's "extraordinary period from 1926
`to 1929, [when] he worked without interruption on a series of films that
`make him, arguably, the greatest actondirector in the history of the
`
`movies."[2] His career declined aftenrvard with a dispiriting loss of his
`artistic independence when he was hired on to MGM which fueled a
`crippling alcoholism that ruined his family life. However, he recovered
`in the 19405, remarried and revived his career to a degree as an
`honored comic performer forthe rest of his life, earning an Academy
`Honorary Award in 1956.
`
`Born
`
`_ Died
`
`Orson Welles stated that Keaton's The General is "the greatest
`comedy ever made, the greatest Civil War film ever made, and
`
`perhaps the greatest film ever made."[5] A 2092 worldwide poll by
`Sight 8. Sound ranked Keaton's The General as the 15th best film of
`all time. Three other Keaton films received votes in the magazine's
`
`survey: Our Hosprlalrly, Sherlock, Jr., and The Navigalorlel
`
`Contents [hide}
`
`1 Career
`
`1.1 Early life in vaudeville
`1.2 Silent film era
`
`1.3 Use 01' parody
`1.4 Sound era and television
`1 d 1 Frllmnfrnnsil Dir-tllrnc:
`
`Z Cause of
`_ death
`Resting
`place
`
`I Occupation
`
`= Years active
`
`' Spouse(s)
`
`Children
`
`“B'u'ste_r'Keato-n
`
`
`
`Joseph Frank Keaton
`October 4, 1395
`Piqua, Kansas, U.S.
`February 1, 1966 (aged 79)
`Woodland Hills, Los Angeles,
`California, U.S.
`Lung cancer
`
`Forest Lawn Memorial Park,
`Hollywood Hills
`Actor, director, producer,
`writer, stunt performer
`1898-1966
`
`Natalie Talmadge (rr_1_._ 1921;
`.‘!l.}.'.:. 1932)
`Mae Scriven (_m_._ 1933;
`1936)
`Eleanor Norris (rn. 1940-66)
`2
`
`

`

`http.fi'en.wi|<ipedia.0rofwikifBuster Keaton
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`08i'18f2014 09.19 21 PM
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`it Ueutsch
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`Tiirkge
`
`1.4.1 Educational Pictures
`1.4.2 Columbia Pictures
`1.4.3 19405 and feature tiims
`
`1.4.4 19505-19605 and television
`2 Personal tile
`3 Death
`
`4 Influence and legacy
`4.1 Pork pie hats
`in l-ilmography
`6 References
`
`? Further reading
`8 External links
`
`Career [edit]
`
`Early life in vaudeville [edit]
`
`Keaton was born Joseph Frank Keatonm into a vaudeville family. He was named "Joseph" to continue a tradition
`on his father's side—he was sixth in a line bearing the name Joseph Keatonm—and "Frank" tor his maternal
`grandfather, who disapproved of the parents’ union. Later, Keaton changed his middle name to "Francis".m His
`father was Joseph Hallie "Joe" Keaton, a native of Vigo County, Indiana. Joe Keaton owned a traveling show with
`Harry Houdini called the "Mohawk Indian Medicine Company“, which pertonned on stage and sold patent medicine
`on the side. Buster Keaton was born in Piqua, Kansas, the small town where his mother, Myra Keaton (nee Myra
`
`Edith Cutter), happened to go into laborm
`
`
`
`Six—year—old Buster Keaton with his
`parents Myra and Joe Keaton during a
`vaudeville act
`
`5
`
`According to a frequentIy—repeateo story, which may be apocryphaI,[°3
`Keaton acquired the nickname "Buster" at about eighteen months of
`age. Keaton told interviewer Fletcher Markle that Houdini happened to
`be present one day when the young Keaton took a tumble down a long
`flight of stairs without injury. After the infant sat up and shook off his
`
`experience, Houdini remarked, "That was a reai buster!" According to
`Keaton, in those days, the word "buster" was used to refer to a spill or a
`fall that had the potential to produce injury. After this, it was Keaton‘s
`father who began to use the nickname to refer to the youngster. Keaton
`
`retold the anecdote over the years, including a 1964 interview with the
`
`CBC‘s Tetescope_m]
`
`At the age of three, Keaton began performing with his parents in The
`Three Keatons. He first appeared on stage in 1899 in Wilmington,
`Delaware. The act was mainly a comedy sketch. Myra played the saxophone to one side, while Joe and Buster
`performed on center stage. The young Keaton would goad his father by disobeying him, and the elder Keaton would
`respond by throwing him against the scenery, into the orchestra pit, or even into the audience. A suitcase handle
`
`

`

`http.h'en.wi|<ipedia.0rofwikifBuster Keaton
`
`08r'18f2014 09.19 21PM
`
`n ul ngu
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`‘.-’irpai'Hcbi<a
`Tiéng vie:
`Winaray
`E
`2::
`
`.¢Ei:|it links
`
`was sewn into Keaton's clothing to aid with the constant tossing. The act evolved as Keaton learned to take trick
`falls safely; he was rarely injured or bruised on stage. This knockabout style of comedy led to accusations of child
`abuse, and occasionally, arrest. However, Buster Keaton was always able to show the authorities that he had no
`bruises or broken bones. He was eventually billed as "The Little Boy Who Can't Be Damaged,‘ with the overall act
`
`being advertised as "'The Roughest Act That Was Ever in the History of the Stage.“m] Decades later, Keaton said
`that he was never hurt by his father and that the falls and physical comedy were a matter of proper technical
`execution. In 1914, Keaton told the Detroit News:
`
`The secret is in landing limp and breaking the fall with a foot or a hand. It's a knack. I started so young
`
`that landing right is second nature with me. Several times I'd have been kitted if I hadn't been able to land
`
`like a cat. imitators of our act don't last long, because they can't stand the treatmentmi
`
`Keaton claimed he was having so much fun that he would sometimes begin laughing as his father threw him across
`the stage. Noticing that this drew fewer laughs from the audience, he adopted his famous deadpan expression
`
`whenever he was working.“
`
`The act ran up against laws banning child performers in vaudeville. According to one biographer, Keaton was made
`to go to school while performing in New York, but only attended for part of one day. Despite tangles with the law and
`a disastrous tour of music halls in the United Kingdom, Keaton was a rising star in the theater. Keaton stated that he
`learned to read and write late, and was taught by his mother. By the time he was 21, his father's alcoholism
`
`threatened the reputation of the family act,“ 1] so Keaton and his mother, Myra, left for New York, where Buster
`Keaton's career swiftly moved from vaudeville to fiIm.“3]
`
`Keaton served in France with the 40th infantry Division during World War I. His unit remained intact and was not
`broken up to provide replacements, as happened to some other late—arnving divisions. During his time in uniform, he
`
`suffered an ear infection that permanently impaired his heanng.“4]“5]
`
`Silent film era [edit]
`
`In February 1917, Keaton met Roscoe "Fatty" Arbuckle at the Talmadge Studios in New York City, where Arbuckle
`was under contract to Joseph M. Schenck. Joe Keaton disapproved of films, and Buster also had reservations about
`the medium. During his first meeting with Arbuclde, he asked to borrow one of the cameras to get a feel for how it
`worked. He took the camera back to his hotet room, dismantled and reassembled it. With this rough understanding
`of the mechanics of the moving pictures, he returned the next day, camera in hand, asking for work. He was hired
`as a co—star and gag man, making his first appearance in The Butcher Boy. Keaton later claimed that he was soon
`Arbuck|e's second director and his entire gag department. He appeared in a total of 14 Arbuckle shorts, running into
`1920. They were popular and, contrary to Keaton's later reputation as "The Great Stone Face‘, he often smiled and
`even laughed in them. Keaton and Arbuckle became close friends, and Keaton was one of few people to defend
`Arbuck|e's character during accusations that he was responsible for the death of actress Virginia Rappe.
`
`In 1920, The Saphead was released, in which Keaton had his first starring role in a full—length feature. It was based
`on a successful play, The New Henrietta, which had already been filmed once, under the title The Lamb, with
`Douglas Fairbanks playing the lead. Fairbanks recommended Keaton to take the role for the remake five years later,
`since the film was to have a comic slant.
`
`

`

`littp.llen.wi|»<ipedia.orolwikilBuster Keaton
`
`08l18l2014 09.19 21 PM
`
`After Keaton's successful work with Arbuckle, Schenck gave him his own
`production unit, Buster Keaton Comedies. He made a series of two—reel comedies,
`including One Week (1920), The Playhouse (1921), Cops (1922), and The Electric
`House (1922). Keaton then moved to tuII—Iength features.
`
`Keaton's writers included Clyde Bruckman,
`
`Joseph Mitchell and Jean Havez, but the most
`
`
`
`BUSTBR KEATON
`CoNV| CT
`
`s
`
`Movie poster for the 1920 film
`Convict 13
`
`5‘
`
`memorable images of his careerlm
`
`A clip from the beginning of E
`Cops
`
`ingenious gags were generally conceived by
`Keaton himself. Comedy director Leo
`tlltcCarey, recalling the freewheeling days of
`making s