Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA135479
`ESTTA Tracking number:
`04/15/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`78538396
`Retriever Brands LLC
`LITTON
`Theodore R. Remaklus
`Wood, Herron & Evans, L.L.P.
`2700 Carew Tower441 Vine Street
`Cincinnati, OH 45202
`UNITED STATES
`tremaklus@whepatent.com
`Appeal Brief
`appeal brief.pdf ( 18 pages )(67294 bytes )
`Theodore R. Remaklus
`tremaklus@whepatent.com
`/theodore r remaklus/
`04/15/2007
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`3
`3
`;
`
`3 )
`
`In re Retriever Brands LLC,
`Serial N0.:
`78538396
`Mark:
`LITTON
`Appeal Filed:
`November 30, 2006
`
`APPLICANT'S APPEAL BRIEF
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................. .. 1
`
`FACTS ............................................................................................................................... . . 1
`
`III.
`
`ISSUES ON APPEAL ....................................................................................................... ..4
`
`IV.
`
`ARGUMENT ..................................................................................................................... ..4
`
`A.
`
`"LITTON" Is Not Primarily Merely a Surname Under Section
`2(e)(4) of the Trademark Act ................................................................................. ..4
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`There is No Person Associated With Applicant With the Last
`Name LITTON ........................................................................................... ..6
`
`The Mark LITTON Does Not Have the "Look or Feel" of a
`
`Surname and is Distinctive ........................................................................ ..6
`
`The Term LITTON Has Other Recognized Significance .......................... ..6
`
`If Seen as a Surname, LITTON is a Very Rare Surname .......................... ..8
`
`LITTON Is Not Primarily Merely a Surname ......................................... .. 11
`
`B.
`
`Applicant's Alternative Amendment of the Application to the
`Supplemental Register ......................................................................................... ..ll
`
`V.
`
`CONCLUSION ................................................................................................................ ..l5
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`In re Bentliin Mgt., 37 USPQ2d 1332 (TTAB 1995) ........................................................... ..5, 9, 11
`
`In re Ciclo Tecnica Industrial, S.A., 194 USPQ 547 (TTAB 1977). ............................................. ..8
`
`In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) .......................... .. 12-13
`
`In re Garan, Inc., 3 USPQ2d 1537 (TTAB 1987) ......................................................................... ..8
`
`In re Gregory, 70 USPQ2d 1792 (TTAB 2004) ...................................................................... ..9, 11
`
`In re Harris—Intertype Corp., 518 F.2d 629, 186 USPQ 238 (CCPA 1975) .................................. ..5
`
`In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988) .................................... ..4
`
`In re Kalian and Weisz Jewelry Manufacturing Corp., 184 USPQ 421,
`
`508 F.2d 831 (CCPA 1975) ........................................................................................... ..4—5
`
`In re Pyro—Spectaculars Inc., 63 USPQ2d 2022 (TTAB 2002) ................................................. .. 7-8
`
`In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994) ...................................................... ..10
`
`In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) ............................................. ..5, 6, 8, 9
`
`Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984) ..................................... ..6
`
`Statutes/Rules
`
`MPEP 816.04 ........................................................................................................................... ..3, 11
`
`MPEP 816.05 ......................................................................................................................... ..12, 13
`
`MPEP1211.01(a) ........................................................................................................................... ..5
`
`MPEP 1212.029(c) ....................................................................................................................... ..14
`
`Trademark Act Section 2(d), 15 U.S. C. § 1052(d) ................................................................... ..2, 3
`
`Trademark Act Section 2(e)(4), 15 U.S.C. § 1052(e)(4) ..................................................... .. passim
`
`

`
`I.
`
`INTRODUCTION
`
`Applicant appealed from the Examining Attorney's refusal to register the mark
`
`LITTON of Application No. 78/538,396 for use with "household appliances, namely,
`
`microwave ovens for cooking, electric toasters, electric coffee makers" in Class ll, on
`
`the grounds that the mark is primarily merely a surname under Section 2(e)(4) of the
`
`Trademark Act of 1946 (as amended), 15 U.S.C. § l052(e)(4). The LITTON mark, when
`
`used with the goods of the present application, would not be perceived by consumers as
`
`primarily merely a surname given the rarity of LITTON as a surname and the notoriety of
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`the LITTON when used in connection with electronic kitchen appliances, and particularly
`
`microwave ovens. Accordingly, the Examining Attorney's refusal to register the
`
`LITTON mark should be reversed.
`
`Applicant alternatively amended its application to the Supplemental Register in
`
`the event that the Examining Attorney, and now the Board, does not conclude the
`
`LITTON mark is entitled to registration on the Principal Register. The Examining
`
`Attorney did not assert the mark is incapable identifying and distinguishing Applicant's
`
`goods. Accordingly, in the event the Board does not reverse the Examining Attorney's
`
`refusal to register the LITTON mark on the Principal Register, the Board should remand
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`the matter to the Examining Attorney for implementation of the alternative amendment of
`
`the application to the Supplemental Register.
`
`11.
`
`FACTS
`
`Applicant Retriever Brands LLC applied for registration of the LITTON mark on
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`the Principal Register on December 26, 2004 for "Electronic equipment and accessories,
`
`namely, cables; surge protectors; extension cords. Household appliances, namely,
`
`

`
`microwave ovens for cooking; electric fans; electric toasters; electric coffee makers" in
`
`Class 7.
`
`On July 31, 2005, the Examining Attorney refused registration under the
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`Trademark Act Section 2(d), l5 U.S. C. § l052(d), on the grounds that Applicant's
`
`LITTON mark, when used in connection with electronic equipment and accessories,
`
`namely, cables, surge protectors, extension cords; household appliances, namely
`
`microwave ovens for cooking; electric fans; electric toasters; electric coffee makers, is
`
`considered substantially similar to the mark LITON for "electrical lighting fixtures" of
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`Registration No. 2,659,879, so as to likely cause confusion, mistake or to deceive. The
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`Examining Attorney also refused registration under the Trademark Act Section 2(e) (4),
`
`l5 U.S.C. § l052(e)(4), on the grounds that the LITTON mark is primarily merely a
`
`surname. The Examining Attorney attached a listing from Verizon's online directory,
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`www.su;ger;gages.com, purporting to show the first 15 entries of more than 1000
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`residential listings for the surname LITTON. Finally, The Examining Attorney also
`
`objected to the identification of goods and the International Class in which the goods
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`were placed in the application.
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`Applicant filed a Petition to Revive Abandoned Application on April 25, 2006
`
`(hereinafter "Petition to Revive"),1 amending the recited goods by cancelling those in
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`Class 7 and adding the following goods in Class ll: " household appliances, namely,
`
`microwave ovens for cooking, electric toasters, electric coffee makers." Applicant also
`
`refuted the Sections 2(d) and 2(e)(4) refusals. On the Section 2(e)(4) refusal, Applicant
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`submitted evidence of the rarity of the term LITTON as a surname, particularly in several
`
`major metropolitan regions, and presented evidence that, although there is no dictionary
`
`1 The application had been deemed abandoned for failure to respond timely to the
`office action.
`
`2
`
`

`
`definition of the term LITTON, it clearly has a meaning to consumers, and particularly
`
`consumers of home appliances that is other than a surname, and the mark would call to
`
`mind the well—known LITTON brand of microwaves available in the 1970s and 1980s.
`
`On June 1, 2006, the Examining Attorney withdrew the Section 2(d) refusal, but
`
`finally refused the mark LITTON based on Section 2(e)(4). The Examining Attorney
`
`
`referenced the previously cited Verizon online directory, wwwzsu er aces.
`
`
`
`com, results,
`
`and also attached the results of a search on the LEXIS/NEXIS P—Find Database,
`
`purporting to show the first 100 listings of 2,120 residential listings for the surname
`
`LITTON, two online dictionary definitions (one from RhymeZ0ne and one from
`
`L00kwayup.c0m) identifying LITTON as a surname, and other online dictionaries
`
`showing no definition of LITTON (Merriam—Webster 0nLine, Bartlebycom and
`
`Encarta. msn. com).
`
`Applicant filed a request for reconsideration on November 30, 2006, and
`
`concurrently (and timely) filed a notice of appeal. In the request for reconsideration,
`
`Applicant rebutted the Examining Attorney's position noting that the evidence submitted
`
`by the Examining Attorney confirmed the rarity of the mark and that the Examining
`
`Attorney failed to give sufficient weight to the evidence previously submitted by
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`Applicant showing that consumers would recall the well—known LITTON brand when
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`viewing the mark in connection with Applicant's goods. Applicant, in the alternative,
`
`amended the application to the Supplemental Register, in accordance with MPEP 816.04,
`
`but only in the event the Examining Attorney and/or the Board did not concur that the
`
`LITTON mark was entitled to registration on the Principal Register. Applicant
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`concurrently filed an Amendment to Allege Use.2
`
`2 A Notice of Acceptance of Amendment to Use was mailed on January 30, 2007.
`3
`
`

`
`On December 22, 2006, the Examining Attorney issued a response denying the
`
`request for reconsideration. The Exan1ining Attorney attached additional evidence
`
`consisting of printouts of a selected 35 of a purported 1,115 newspaper articles located in
`
`the LEXIS/NEXIS database in 2006 that include the surname LITTON, search results
`
`from 411.com, WhitePages.c0m and Switchboard. com showing 300 or "more than 100"
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`residential listings under the surname LITTON and a printout of the first 20 entries out of
`
`a purported 1,520 entries from the Social Security Death Index, and printouts showing
`
`that prior registrations of the term LITTON were obtained under Section 2(f). Finally,
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`the Examining Attorney asserted that Applicant was not permitted to amend the
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`application to the Supplemental Register in the alternative and that, by appealing from the
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`Examiner's final refusal, Applicant is not permitted to amend the application to the
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`Supplemental Register in the event the Board affirms the final refusal.
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`III.
`
`ISSUES ON APPEAL
`
`The two issues on appeal are:
`
`(1) Whether Applicant's mark, LITTON, is primarily merely a surname within
`
`the meaning of Section 2(e)(4) of the Trademark Act, 15 U.S.C. § l052(e)(4); and
`
`(2)
`
`In the event the Board affirms the refusal to register Applicant's mark,
`
`LITTON, on the Principal Register, whether Applicant properly alternatively amended
`
`the application for registration on the Supplemental Register.
`
`IV.
`
`ARGUMENT
`
`A.
`
`" LITTON" Is Not Primarily Merely a Surname Under Section 2(e)(4)
`of the Trademark Act
`
`A term is primarily merely a surname if its primary significance to the purchasing
`
`public is that of a surname. In re Indnstrie Pirelli Societa per Azioni, 9 USPQ2d 1564,
`
`1565 (TTAB 1988); In re Kahan and Weisz Jewelry Manufacturing Corp., 184 USPQ
`
`4
`
`

`
`421, 508 F.2d 831 (CCPA 1975). The burden is on the Examining Attorney to establish a
`
`prima facie case that a Word is primarily merely a surname. Id.
`
`In determining whether a
`
`term is primarily merely a surname, it is the impact the term has on the purchasing public
`
`that is relevant.
`
`[l]t is that impact or impression which should be evaluated in determining
`whether or not the primary significance of a word when applied to a
`product is a surname significance. If it is, and if it is only that, then it is
`primarily merely a surname.
`
`In re Harris—Intertype Corp., 518 F.2d 629, 631, 186 USPQ 238, 239 (CCPA 1975)
`
`(quoting Ex parte Rivera Watch Corp., 106 USPQ 145 (Comm'r Pat. 1955)) (emphasis in
`
`original); see also MPEP 1211.01(a) ("Often a Word will have a meaning or significance
`
`in addition to its significance as a surname. The examining attorney must determine the
`
`primary meaning of the term to the public.").
`
`In making that determination, a five—factor test is typically applied. Under this
`
`test, a mark is found to be primarily merely a surname if 1) it is not a rare surname; 2) it
`
`is the surname of someone connected with Applicant; 3) it has no other recognizable
`
`meaning or significance; 4) its structure and pronunciation has the “look and feel” of a
`
`surname; and 5) its stylization is not distinctive enough to create a separate commercial
`
`impression from that of a surname. In re Bentlzin Mgt., 37 USPQ2d 1332, 1333 (TTAB
`
`1995). Moreover, "[t]o the extent that there is any doubt on the question of whether the
`
`mark would be perceived as primarily merely a surname, we resolve such doubt in favor
`
`of the applicant." In re United Distillers plc, 56 USPQ2d 1220, 1222 (TTAB 2000).
`
`Here, the Examining Attorney has failed to sustain her burden under any of the five
`
`factors. The mark LITTON, as applied to Applicant's goods, is not primarily merely a
`
`surname and, thus, should be allowed to register on the Principal Register.
`
`

`
`1.
`
`There is No Per son Associated With Applicant With the Last
`Name LITTON
`
`Applicant made clear in its Petition to Revive that there is no person associated
`
`with Applicant with the last name LITTON.
`
`2.
`
`The Mark LITTON Does Not Have the "Look or Feel" of a
`
`Surname and is Distinctive
`
`There is nothing regarding Applicant's mark LITTON that has the look or feel of
`
`a surname that cannot be said of every word in the English language. In fact, the
`
`LITTON mark has the appearance of a play on the terms "Lite" and "Ton," which
`
`certainly have no surname significance. Thus, although the LITTON term is used, and
`
`then only rarely, as a surname, it is one of those names that does not have the look or feel
`
`of a surname. See, e. g., United Distillers plc, supra.
`
`3.
`
`The Term LITTON Has Other Recognized Significance
`
`Although there is no dictionary definition of the term LITTON, that term clearly
`
`has a meaning to consumers other than as a surname, and particularly consumers of home
`
`appliances. Litton Systems, Inc. was a leading manufacturer of microwave ovens in the
`
`1970s and 1980s. Indeed, one of the leading design patent infringement/trade dress cases
`
`was brought by Litton against Whirlpool, and Litton's Model 419 microwave oven is
`
`shown on page 1430 of the Federal Circuit's decision in that case. See Litton Systems,
`
`Inc. v. Whirlpool Corp., 728 F.2d 1423, 1430 (Fed. Cir. 1984) (relevant pages attached as
`
`Exhibit 2 to the Petition to Revive).
`
`Litton and its microwaves were also the subject of frequent newspaper articles, 9
`
`examples of which were attached as Exhibit 3 to the Petition to Revive." Although
`
`3 These substantive articles on the use of the LITTON brand are in sharp contrast
`to the articles identified by the Examining Attorney which do nothing more than identify
`a person with the last name "Litton," but which say nothing about the person.
`6
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`

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`production of LITTON brand microwaves ended in 1989 (see Exhibit 3 to Petition to
`
`Revive at page 2), in 1999, it was still said: "To the average consumer, Litton Industries,
`
`Inc. is probably best known as a maker of microwave ovens." (Exhibit 3 to Petition to
`
`Revive at page 1.) In 1988, it was stated: "The Litton name is a franchise that's
`
`invaluable .
`
`.
`
`. It's a name (that) should be treated with great respect." (Exhibit 3 to
`
`Petition to Revive at page 4.) In 1984, it was estimated that Litton held a 10-14% share
`
`(it was once as high as 30%) of the over 6 million unit annual market for microwave
`
`ovens. (Exhibit 3 to Petition to Revive at pages 9, 13 and 14.) It was also stated in 1984:
`
`"As a retailer I'd like to see the Litton name. It has a lot of customer acceptance and you
`
`don't want to just wipe it away." (Exhibit 3 to Petition to Revive at page 17.) The online
`
`encyclopedia Wikopedia has an article (updated in April of 2006) on microwave ovens
`
`that prominently mentions the LITTON brand (see Exhibit 4 to Petition to Revive).
`
`Indeed, before Litton went out of business, it held at one time 21 different trademark
`
`registrations that included the LITTON mark for a wide variety of products, including
`
`microwave ovens. A printout of these registrations (all now cancelled) from the
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`Trademark Electronic Search System (TESS) was attached as Exhibit 5 to the Petition to
`
`Revive."
`
`As this Board concluded with respect to the mark SOUSA:
`
`[T]he immediate association of the term SOUSA will be with the famous
`
`"March King," John Philip Sousa. The primary significance of the term
`SOUSA, as used in connection with these goods and services [fireworks
`and shows featuring pyrotechnics], is as the name of a specific person well
`known in American history for his patriotic music. Although "Sousa" may
`also be a surname in current use in the United States, any such connotation
`
`4 The Examining Attorney noted in the response to the request for reconsideration
`that several of these registrations were registered under Section 2(f). However, the Board
`will note that most of the registrations were n_ot registered under Section 2(f) and there
`was no disclaimer of the term "LITTON."
`
`7
`
`

`
`of the term would clearly be secondary in significance when consideration
`is given to the particular name of applicant's goods and service.
`
`In re Pyr0—Spectacnlars Inc., 63 USPQ2d 2022, 2024 (TTAB 2002). Here, consumers of
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`electrical cooking appliances, the goods of the pending application, upon seeing the
`
`LITTON mark would immediately associate the name, not as a surname, but rather, as
`
`reminiscent of the LITTON brand they knew that made microwave ovens.
`
`4.
`
`If Seen as a Surname, LITTON is a Very Rare Surname
`
`Even if the mark LITTON is still considered a potential surname based on the
`
`evidence of the use of the term LITTON in that context, it is too rare a surname to
`
`support the "primarily merely" requirement of the statute. In re Garan, Inc., 3 USPQ2d
`
`1537 (TTAB 1987); see also, In re Ciclo Tecnica Industrial, S.A., 194 USPQ 547 (TTAB
`
`1977).
`
`First, to the extent the term LITTON is a surname, it has clearly been defined as a
`
`"rare" surname. (See definition of "LITTON" in RliymeZ0ne attached to the June 1, 2006
`
`Office Action of the Examining Attorney.) Second, the Examining Attorney's reliance on
`
`searches of various telephone directories and other computer databases establishes the
`
`rarity of LITTON as a surname.
`
`Of the millions of people in the Verizon online directory,
`
`V\/W"W.SU. 361' 33. '€~S.COl’Yl,
`
`the search undertaken by the Examining Attorney purported to show only "more than
`
`1000" residential listings for the surname LITTON, a meager number. See United
`
`Distillers, 56 USPQ2d at 1221 (finding HACKLER, which had 1,295 listings in
`
`Phonedisc database, to be rare). As this Board explained in a later decision, the
`
`HACKLER name was found to be rare, not merely because there were only 1,295
`
`listings, but also because of the "absence of any significant listings from telephone
`
`directories for certain major metropolitan areas (the borough of Manhattan in New York
`
`8
`
`

`
`City and the Washington, DC/Northem Virginia areas)." In re Gregory, 70 USPQ2d
`
`1792, 1794 (TTAB 2004). Here, as shown by the printouts from the same Verizon online
`
`directory used by the Examining Attorney, _y§_/'_j:_«w_v_'_\_,§._/'_Lsggp§;gjpgg._g_§;§,_g_g_§r;, attached as Exhibit 1
`
`to the Petition to Revive, there is an absence of any significant listings for LITTON in
`
`major metropolitan areas, as it appears in only 6 listings in Washington, D.C., in only 4
`
`listings in New York City, in only 3 listings in Los Angeles, California, and in only 1
`
`listing in Boston, Massachusetts.
`
`When Applicant rebutted the Examining Attorney's evidence, the Examining
`
`Attorney responded by providing with the June 1, 2006 office action finally refusing
`
`registration of the LITTON mark the results of a search using the LEXIS P—Find database
`
`that purportedly shows 2,120 individuals having the surname LITTON. However, the P-
`
`Find database is a listing of over 146 million individuals meaning that the surname
`
`LITTON represents an infinitesimally small percentage of those individuals, on the order
`
`of 15 ten—thousandths of a percent (about .0015 %) of the 148 million United States
`
`individuals in the database. The other searches undertaken by the Examining Attorney on
`
`411.com, WhitePages.c0m and Switchboard. com attached to the Examining Attorney's
`
`December 22, 2006 response to the request for reconsideration show even less with only
`
`300 (or "more than 100" for the Switchboard. com search) individuals with the alleged
`
`surname LITTON. These numbers show that the LITTON is a rare surname.5 See, e. g.,
`
`United Distillers, 56 USPQ2d at 1221 (finding HACKLER to be rare despite 1,295
`
`listing in 80 million entry Phonedisc database); Benthin, 37 USPQ2d at 1333 (finding
`
`BENTHIN to be rare despite 100 listing of approximately 75,000,000 entries in
`
`5 The Examining Attorney also included a listing from the Social Security Index.
`However, this listing, which included deaths dating back to at least 1962, identified no
`more than 1,520 people. Also, the relevance of deceased people having the surname
`LITTON is not clear.
`
`9
`
`

`
`Phonedisc database); In re Sava Research Corp., 32 USPQ2d 1380, 1380-81 (TTAB
`
`1994) ("SAVA is indeed a rare surname" despite 100 different SAVAs among
`
`90,000,000 listings).
`
`The purported newspaper articles identified by the Examining Attorney on the
`
`LEXIS/NEXIS database are, at best, unreliable and inconclusive of the significance of the
`
`term LITTON as primarily merely a surname. The Examining Attorney did not limit or
`
`qualify the search statement and obtained all articles that included the term "LITTON,"
`
`and it is clear they are not all related to use as a surname. Indeed, the Examining
`
`Attorney specifically and intentionally included only article numbers 1, 5, 6, 8-10, l2, l3,
`
`l5, l7, 18, 20, 23, 29, 30, 33, 35, 36, 39, 41, 42, 46, 56-58, 60-62, 66, 75, 76, 82, 92 and
`
`100 in the materials attached to the response to the request for reconsideration. (See
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`December 22, 2006 response to request for reconsideration.)6 The only conclusion that
`
`can be reached is that the other 66 articles in the first 100 articles that the Examining
`
`Attorney failed to provide did @ use the term LITTON as a surname. Moreover, a
`
`review of the articles provided show that the use of LITTON as a surname is not
`
`substantive. Rather, they are from a wide variety of newspapers and publications that
`
`cover the full range of human accomplishments (making a high school honor roll) and
`
`tragedies (obituaries), and are consistent with the fact that there are hundreds of people in
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`the United States with the surname LITTON who are having children, attending funerals,
`
`and engaging in local business and sporting events. They are likewise consistent with the
`
`fact that LITTON is a rare surname. Indeed, "media attention or publicity accorded
`
`public personalities with the name" are the news articles that would be of significance,
`
`6 The Examining Attorney's response also states that article numbers l0l, 103,
`107-109, lll, ll4, ll6, ll8, ll9, l2l, 125, 126, 132-134, 139, 140, 142 and 146 were to
`
`be included, but those articles were not part of the response.
`10
`
`

`
`not those identified by the Examining Attorney. Gregory, 70 USPQ2d at 1795 (finding
`
`articles about the surname ROGAN were relevant as they were about James Rogan, a
`
`majority leader of the California State Assembly, U.S. Congressman and involved in the
`
`impeachment of President Clinton, Tom Rogan, a Salt Lake City councilman, Wilber
`
`Rogan, enshrined in the Baseball Hall of Fame, Barbara Rogan, author of 7 books, and
`
`Joe Rogan, host of the NBC television show "Fear Factor," and that this showed a large
`
`number of people exposed to the name).
`
`5.
`
`LITTON Is Not Primarily Merely a Surname
`
`Based on the five factors established by the Board to determine surname
`
`significance under Section 2(e) (4), the mark LITTON is clearly not primarily merely a
`
`surname. Namely, 1) if Applicant's mark is considered a surname, it is clearly a very rare
`
`surname; 2) Applicant's mark is not the surname of anyone connected with Applicant; 3)
`
`the LITTON the mark is distinctive and does not have the "look and feel" of a surname;
`
`and 4) the LITTON mark has a recognized significance other than as a surname.
`
`Applicant also respectfully reminds the Board that in matters of Section 2(e)(4)
`
`refusals, doubt must be resolved in favor of the applicant. Benthin, 37 USPQ2d at 1334.
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`For the foregoing reasons, it is respectfully requested that the Board reverse the
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`Examining Attorney's refusal to register LITTON for "household appliances, namely,
`
`microwave ovens for cooking, electric toasters, electric coffee makers" in Class 11 under
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`Trademark Act Section 2(e)(4), 15 U.S.C. § 1052(e)(4).
`
`B.
`
`Applicant's Alternative Amendment of the Application to the
`Supplemental Register
`
`In its November 30, 2006 request for reconsideration, Applicant continued to
`
`argue that the LITTON mark should be registered on the Principal Register. However, in
`
`the alternative, and in accordance with MPEP 816.04, Applicant sought to amend the
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`1 1
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`

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`application to the Supplemental Register, but only in the event that the Examining
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`Attorney maintained the refusal to register and that refusal was affirmed on appeal. The
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`Examining Attorney, however, in the December 22, 2006 response to request for
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`reconsideration, has erroneously asserted, citing MPEP 816.05, that Applicant is not
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`permitted to continue to argue that the LITTON mark is entitled to registration on the
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`Principal Register and alternatively amend the application to the Supplemental Register.7
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`The Examining Attorney's position would mean that an applicant may never appeal a
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`refusal under Section 2(e)(4) to register a mark on the Principal Register without waiving
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`the right to have that mark registered on the Supplemental Register in the alternative.
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`That is not the law.
`
`MPEP 816.04 provides:
`
`The applicant may argue the merits of the examining attorney's refusal of
`registration on the Principal Register and, in the alternative, request
`reconsideration on the Supplemental Register. Similarly, the applicant
`may seek registration on the Principal Register under § 2(f) and, in the
`alternative, on the Supplemental Register.
`
`Thus, an applicant is permitted and, in fact, entitled to amend an application to the
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`Supplemental Register while simultaneously arguing in the alternative that the mark is
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`registerable on the Principal Register, as Applicant did in this case. For example, in In re
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`Eddie Z 's Blinds and Drapery, Inc., 74 USPQ2d 1037, 1038 (TTAB 2005), the Board
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`addressed the procedural issue of whether an applicant had amended its application to the
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`Supplemental Register in the alternative. In that case, the Board found it had not because
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`[t]he amendment to the Supplemental Register does not state that it was
`made as an alternative and was not coupled with continued argument for
`registration on the Principal Register. In a "remarks" section of the
`amendment to the Supplemental Register, applicant states "it still
`
`7 Applicant notes that the Examining Attorney did not assert that the LITTON
`mark was incapable of identifying and distinguishing applicant's goods as required by
`MPEP 816.04.
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`12
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`

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`disagrees with [the] Examining Attorney's position regarding the alleged
`descriptiveness of the mark." However, applicant then stated that, in View
`of the amendment, .
`.
`. Applicant submits that the application is now in
`proper form for allowance. .
`.
`. Such action is respectfully requested."
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`Id. at 1038, n.7. Thus, because the applicant did Q state that it was amending the
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`application to the Supplemental Register as an alternative, it was found to have waived
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`the right to do so. Here, by contrast, Applicant clearly stated that it was amending the
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`application to the Supplemental Register, but in the alternative. Indeed, after requesting
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`reconsideration of the refusal to register the LITTON mark, Applicant stated:
`
`In the alternative, in the event the Examining Attorney maintains
`his refusal to register the LITTON mark on the Principal Register,
`Applicant hereby amends its application to the Supplemental Register. In
`that regard, Applicant has concurrently filed an Amendment to Allege Use
`of the mark. Although the Examining Attorney has not specifically
`notified Applicant of the possibility of amending the application to the
`Supplemental Register, Applicant notes that such an amendment is
`common for marks that have been refused registration under Section
`2(e)(4). See, e.g., In re Gregory, 70 USPQ2d 1792 (TTAB 2004), and
`MPEP§ 816.04.
`
`Finally, notwithstanding that Applicant is, in the alternative,
`amending the application to the Supplemental Register, it is not waiving
`its right to argue the Section 2(e)(4) refusal on appeal. In that regard,
`Applicant is concurrently filing a notice of appeal to the Examining
`Attorney's final refusal to register the LITTON mark on the Principal
`Register. See MPEP § 816.04. Accordingly, Applicant is not prepared to
`accept registration on the Supplemental Register unless the Board
`determines that Applicant's position is not well taken.
`
`(See November 30, 2006 Response to Office Action.)
`
`MPEP 816.05, cited by the Examining Attorney, is not applicable as it relates to
`
`attempts by an applicant to "amend to the Supplemental Register after the Trademark
`
`Trial and Appeal Board has affirmed a refusal of registration on the Principal Register."
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`Here, Applicant has sought to amend the application before any decision by the Board.
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`Indeed, as the MPEP states regarding amendments to the Supplemental Register as an
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`alternative to claiming acquired distinctiveness under § 2(f) for a descriptive mark:
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`13
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`

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`If the issues are framed in the alternative (i. e., whether the matter sought
`to be registered has acquired distinctiveness under § 2(f) or, in the
`alternative, whether it is capable of registration on the Supplemental
`Register, and .
`.
`. the evidence is determined to be insufficient, the mark
`may be registered on the Supplemental Register.
`
`Accordingly, the applicant may submit an amendment to the
`Supplemental Register, and continue to argue entitlement to registration
`on the Principal Register in an appeal.
`
`MPEP l2l2.029(c). Applicant has done just that in this case; it has framed the issues in
`
`the alternative, Applicant was expressly permitted by the rules to submit its amendment
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`to the Supplemental Register in the alternative, and to continue to argue entitlement to
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`registration on the Principal Register.
`
`Accordingly, Applicant respectfully submits that it properly sought to amend the
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`application for the LITTON mark to the Supplemental Register while it continues to
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`argue that the mark is entitled to registration on the Principal Register.
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`Finally, the Commissioner is hereby authorized to charge any underpayment of
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`fees associated with this communication or credit any overpayment to Deposit Account
`
`No. 23-3000.
`
`14
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`

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`V.
`
`CONCLUSION
`
`For all of the foregoing reasons, Applicant respectfully requests that the Board
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`reverse the EXan1ining Attorney's refusal to register LITTON for "household appliances,
`
`namely, microwave ovens for cooking, electric toasters, electric coffee makers" in Class
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`11 under Trademark Act Section 2(e)(4), 15 U.S.C. § 1052(e)(4).
`
`Respectfully submitted,
`
`Date: April 15,2007
`
`By:
`
`P:/mokluo
`
`Theodore R. Re