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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`
`The table below presents the data as entered.
`
`Entered
`
`Input Field
`
`SERIAL
`NUMBER
`
`LAW OFFICE
`ASSIGNED
`
`87182800
`
`LAW OFFICE 114
`
`MARK SECTION
`
`MARK
`
`LITERAL
`ELEMENT
`
`STANDARD
`CHARACTERS
`
`USPTO-
`GENERATED
`IMAGE
`
`MARK
`STATEMENT
`
`ARGUMENT(S)
`
`https://tmng-al.uspto.gov/resting2/api/img/87182800/large
`
`HAMILTON BROKERAGE ACCOUNT
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style, size or color.
`
`Please see the actual argument text attached within the Evidence section.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
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`evi_1744721010-20180119181256294379_._Req_Reconsideration_HAMILTON_BROKERAGE_ACCOUNT_87182800.pdf
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0002.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0003.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0005.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0006.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0007.JPG
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`evi_1744721010-20180119181256294379_._Exhibit_A.pdf
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0008.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0009.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0010.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0011.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0015.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0016.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0017.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0018.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0019.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0020.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0021.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0022.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0023.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0024.JPG
`
`evi_1744721010-20180119181256294379_._Exhibit_B.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0025.JPG
`
`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0026.JPG
`
`evi_1744721010-20180119181256294379_._Exhibit_C.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0027.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0028.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0029.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0030.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0031.JPG
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`evi_1744721010-20180119181256294379_._Exhibit_D.pdf
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0032.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0033.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0034.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0035.JPG
`
`evi_1744721010-20180119181256294379_._Exhibit_E.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0036.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0037.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0038.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0039.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0040.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0041.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0042.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0043.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0044.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0045.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0046.JPG
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`evi_1744721010-20180119181256294379_._Exhibit_F.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0047.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0048.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0049.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0050.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0051.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0052.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0053.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0054.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0055.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0056.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0057.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0058.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0059.JPG
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`evi_1744721010-20180119181256294379_._Exhibit_G.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0060.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0061.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0062.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0063.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0064.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0065.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0066.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0067.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0068.JPG
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`\\TICRS\EXPORT17\IMAGEOUT17\871\828\87182800\xml12\RFR0069.JPG
`
`DESCRIPTION
`OF EVIDENCE
`FILE
`
`Request for Reconsideration arguments; Ex. A - Ex. C are publications regarding Alexander Hamilton; Ex. D is US Security
`and Exchange Commission Search Results; Ex. E are financial association with Alexander Hamilton; Ex. F are examples of
`HAMILTON standalone registrations; and Ex. G are Google Search Results for HAMILTON
`
`       
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`

`

`SIGNATURE SECTION
`
`RESPONSE
`SIGNATURE
`
`SIGNATORY'S
`NAME
`
`SIGNATORY'S
`POSITION
`
`SIGNATORY'S
`PHONE
`NUMBER
`
`/Joshua W. Newman/
`
`Joshua W. Newman
`
`Attorney of Record, IL Bar Member
`
`312-207-1000
`
`DATE SIGNED
`
`01/19/2018
`
`AUTHORIZED
`SIGNATORY
`
`CONCURRENT
`APPEAL
`NOTICE FILED
`
`YES
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Fri Jan 19 18:52:23 EST 2018
`
`TEAS STAMP
`
`USPTO/RFR-XXX.XX.XXX.XX-2
`0180119185223849907-87182
`800-51051f9a6a2d5196d9d11
`f4a492f37c15a467f83663819
`2544dbba5744e9d813b8-N/A-
`N/A-20180119183028895945
`
`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 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 87182800 HAMILTON BROKERAGE ACCOUNT(Standard Characters, see https://tmng-
`al.uspto.gov/resting2/api/img/87182800/large) has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Please see the actual argument text attached within the Evidence section.
`
`EVIDENCE
`Evidence in the nature of Request for Reconsideration arguments; Ex. A - Ex. C are publications regarding Alexander Hamilton; Ex. D is US
`Security and Exchange Commission Search Results; Ex. E are financial association with Alexander Hamilton; Ex. F are examples of
`HAMILTON standalone registrations; and Ex. G are Google Search Results for HAMILTON has been attached.
`Original PDF file:
`evi_1744721010-20180119181256294379_._Req_Reconsideration_HAMILTON_BROKERAGE_ACCOUNT_87182800.pdf
`Converted PDF file(s) ( 6 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`
`

`

`Original PDF file:
`evi_1744721010-20180119181256294379_._Exhibit_A.pdf
`Converted PDF file(s) ( 17 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Evidence-14
`Evidence-15
`Evidence-16
`Evidence-17
`Original PDF file:
`evi_1744721010-20180119181256294379_._Exhibit_B.pdf
`Converted PDF file(s) ( 2 pages)
`Evidence-1
`Evidence-2
`Original PDF file:
`evi_1744721010-20180119181256294379_._Exhibit_C.pdf
`Converted PDF file(s) ( 5 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Original PDF file:
`evi_1744721010-20180119181256294379_._Exhibit_D.pdf
`Converted PDF file(s) ( 4 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Original PDF file:
`evi_1744721010-20180119181256294379_._Exhibit_E.pdf
`Converted PDF file(s) ( 11 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Original PDF file:
`evi_1744721010-20180119181256294379_._Exhibit_F.pdf
`Converted PDF file(s) ( 13 pages)
`Evidence-1
`Evidence-2
`
`

`

`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Original PDF file:
`evi_1744721010-20180119181256294379_._Exhibit_G.pdf
`Converted PDF file(s) ( 10 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /Joshua W. Newman/     Date: 01/19/2018
`Signatory's Name: Joshua W. Newman
`Signatory's Position: Attorney of Record, IL Bar Member
`
`Signatory's Phone Number: 312-207-1000
`
`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, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney
`or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is
`concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior
`representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's
`appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 87182800
`Internet Transmission Date: Fri Jan 19 18:52:23 EST 2018
`TEAS Stamp: USPTO/RFR-XXX.XX.XXX.XX-2018011918522384
`9907-87182800-51051f9a6a2d5196d9d11f4a49
`2f37c15a467f836638192544dbba5744e9d813b8
`-N/A-N/A-20180119183028895945
`
`        
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
` Applicant: MBSC Securities Corporation
`
`Serial Number: 87/182,800
`
`Filed: September 26. 2016
`
`Mark: HAMILTON BROKERAGE ACCOUNT
`
`Brian Neville
`Law Office 114
`
`
`
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 223 13- 1451
`
`I.
`
`Section 2 e 4 Refusal — Primarilv Merelv a Surname
`
`REQUEST FOR RECONSIDERATION
`
`The Examining Attorney has maintained the refusal to register Applicant’s HAMILTON
`
`BROKERAGE ACCOUNT trademark on grounds that
`
`it
`
`is primarily merely a surname.
`
`Applicant respectfully disagrees. In particular, Applicant submits that the Examining Attorney
`
`has misapplied and failed to give proper weight to controlling case law and the evidence
`
`submitted by Applicant. As a result, and in light of the supplemental evidence attached hereto,
`
`Applicant respectfully requests that the Examining Attorney withdraw the Section 2(e)(4) refusal
`
`and allow the HAMILTON BROKERAGE ACCOUNT mark to proceed to registration.
`
`PRIMARILY
`A. HAMILTON BROKERAGE ACCOUNT CANNOT BE
`MERELY A SURNAME BECAUSE
`THE APPLIED-FOR MARK
`IDENTIFIES THE HISTORICAL FIGURE ALEXANDER HAMILTON.
`
`It is well-established that a term with surname significance may not be primarily a
`
`surname if that term also identifies a historical place or person. TMEP § 121 1.01(a)(iv); Lucien
`
`Piccard Watch Corp. 1/. Since 1868 Cresccnr Corp, 314 F. Supp. 329, 331 (S.D.N.Y. 1970)
`
`(holding DA VINCI not primarily merely a surname because it primarily connotes Leonardo Da
`
`Vinci)). That
`
`is the case here. The Examining Attorney argues that because the historical
`
`significance of Alexander Hamilton was known in 19937when the TTAB held that “Hamilton”
`
`was primarily merely a surname in In re Hamilton Pharms Ltd, 27 USPQ2d 1939. 1943 (TTAB
`
`1993)7A1exander Hamilton is not a historical figure. However.
`
`this argument is flawed in
`
`

`

`several respects. To begin with, the TTAB has made clear that “whether the primary significance
`
`of an applied-for mark is merely that of a surname is a question of fact .
`
`.
`
`. [that] must be
`
`resolved on a case-by-case basis. In re Etablissements Barty et FilS, 759 F.2d 15, 225 USPQ
`
`652, 653-54 (Fed. Cir. 1985); see also, eg, In re Polrang Iron ((7 Steel (70., 230 USPQ 79, 79
`
`(TTAB 1986). In the present case, however, the Examining Attorney relies exclusively on In re
`
`Hamilton Pharms. Ltd, and completely ignored the evidence submitted by Applicant regarding
`
`the historical significance of Alexander Hamilton. This is improper.
`
`The Examining Attorney’s conclusion is also based on a misreading of In re Hamilton
`
`Pharms Ltd. In that case, the applicant, whose business was located in Hamilton, Bernruda, took
`
`the position that “Hamilton” is not primarily merely a surname because the ternr has significance
`
`as a readily known geographic designation. 1993 WL 368803 at *2. In support of this argument,
`
`the applicant pointed to excerpts from several dictionaries that defined “Hamilton” as a city,
`
`town, or port. Id. The Board ultimately rejected this argument on grounds that the geographical
`
`significance of “Hamilton” was not as dominant as its surname significance. Id. at 5. However,
`
`noticeably absent from the decision is any discussion about Alexander Hamilton. In fact, there is
`
`no evidence that the applicant or the Board ever even considered the historical significance of
`
`Alexander
`
`Hamilton.
`
`or whether
`
`the
`
`primary
`
`significance
`
`of HAMILTON
`
`PHARMACEUTICALS might be a historical figure. Given the foregoing, and because the
`
`Board’s decision is properly limited to (and solely addresses) the facts and arguments advanced
`
`by the applicant, Applicant respectfully submits that the Examining Attorney’s inferencesithat
`
`Alexander Hamilton is not a historical figure, and that In re Hamilton Pharnts Ltd. precludes
`
`such a findingiare legally untenable.
`
`The Board’s decision in In re Pyro-SPectacn/ars, Ina, 63USPQ2d 2022, 2024 (TTAB
`
`2002) further supports this conclusion. There, the applicant sought to register the mark SOUSA
`
`for fireworks and entertainment services. Although the Examining Attorney established a prima
`
`facie case that the mark was primarily merely a surname, the Board reversed the surname refusal
`
`based on the applicant’s evidence, including, uncontroverted statements that John Phillip Sousa
`
`was an acclaimed band leader and composer of patriotic music, and news articles showing the
`
`continuing fame of Mr. Sousa in the minds of the relevant purchasing public. The Board also
`
`emphasized the fact that the applicant’s fireworks and shows were the types of goods and
`
`services that potential purchasers would associate with patriotic events, figures, and music, and
`
`-2-
`
`

`

`that the primaiy significance of SOUSA, as used in connection with the applicant’s goods and
`
`services, was the name of a person well known in the United States for his patriotic music.
`
`In the present case, Applicant has introduced the same types of facts and evidence that
`
`prompted the Board to reverse the 2(e)(4) refusal in In re Pym-Spectacular; Inc. Indeed, not
`
`only does the record contain uncontroverted statements that Alexander Hamilton was a Founding
`
`Father of the United States, the first Secretary of the Treasury, the author of the Federalist Papers
`
`and the founder of the nation’s financial system, including, without the limitation, The Bank of
`
`New York (the institutional bank owned by Applicant’s parent company, The Bank of New York
`
`Mellon Corporation), but Applicant has submitted several recent news articles that demonstrate
`
`the continuing fame of Alexander Hamilton. See Response to Office Action dated June 21, 2017
`
`at Exhibits H and I; see also Exhibit A.
`
`In fact, some publications have gone so far as to suggest
`
`that Alexander Hamilton is the most influential American in histoiy. See Exhibit B. Moreover,
`
`Alexander Hamilton has become such a cultural forceiin large part due to Lin-Manual
`
`Miranda’s Hamilton musicalithat in 20l5, the U.S. Treasuiy Department scrapped its plans to
`
`remove Alexander Hamilton’ s portrait from the ten-dollar bill. See Exhibit C.
`
`The financial seivices that Applicant intends to offer in connection with the HAMILTON
`
`BROKERAGE ACCOUNT mark, namely, hedge fund and mutual funds, are also the type of
`
`services potential purchasers (sophisticated investors) are likely to associate with the nation’s
`
`banking and financial system—especially since Applicant (like other investment brokerages) had
`
`to register with, and is bound by, the rules and regulations of US. Securities and Exchange
`
`Commission. See Exhibit D. Moreover, because Alexander Hamilton has historical
`
`ties to
`
`Applicant, and Applicant (including through its parent company) actively references Alexander
`
`Hamilton in promotional materials, the primary significance of the HAMILTON BROKERAGE
`
`ACCOUNT mark to the purchasing public, when used in connection with hedge funds and
`
`mutual fundsiis very likely to be the renowned American statesman, Alexander Hamilton.1 See
`
`Exhibit E. As a result, and because Section 2(e)(4) refusals “refer[] to words that standing by
`
`themselves would be perceived only as a sumame"—which is not the case here—Applicant
`
`respectfully requests that the refusal to register the HAMILTON BROKERAGE ACCOUNT
`
`
`1 The phrase “BROKERAGE ACCOUNT” is a financial-related phrase that: (i) connects the mark to the financial
`services industry; and (ii) is suggestive of Applicant‘s investment services. Thus, even though Applicant disclaimed
`the phrase “BROKERAGE ACCOUNT,” it remains part of the mark and reinforces the connection to Alexander
`Hamilton.
`
`

`

`mark on the basis of surname significance be withdrawn. See In re M'ott’s LLP, Serial Nos.
`
`85374805 and 85436615 (Apr. 30, 2013) (citing TMEP§ 1211.01(b)).
`
`B.
`
`HAMILTON BROKERAGE ACCOUNT CANNOT BE PRIMARILY
`MERELY A SURNAME BECAUSE THE APPLIED—FOR MARK HAS A
`NUMBER OF NON-SURNAME MEANINGS.
`
`The relevant question in a Section 2(e)(4) analysis is whether the primary significance of
`
`HAMILTON is as a surname. The arguments and evidence set forth above, and in Applicant’s
`
`initial Response to Office Action, demonstrate that the primary significance of HAMILTON
`
`BROKERAGE ACCOUNT, as used in connection with the applied-for services, is the historic
`
`figure Alexander Hamilton. However, even if the Examining Attorney disagrees, the applied-for
`
`mark has a number of non-surname meanings that warrant the withdrawal of the 2(e)(4) refusal.
`
`l.
`
`The United States Patent and Trademark Office has on multiple
`occasions permitted the registration of standalone HAMILTON
`marks, or marks comprised of HAMILTON and a disclaimed term,
`on the Principal Register without a claim of acquired distinctiveness.
`
`In maintaining the 2(e)(4)
`
`refusal.
`
`the Examining Attorney dismisses all of the
`
`HAMILTON-formative registrations that Applicant attached to its initial Response to Office
`
`Action. See Response to Office Action dated June 21, 2017 at Exhibit C. However,
`
`the
`
`Examining Attorney provides no explanation as to why it ignored HAMILTON MALL (U.S.
`
`Registration No. 2,850,484), a mark that disclaims the term “MALL,” and one that is perfectly
`
`analogous to the present application. In Applicant’s opinion, this oversight is critical. Indeed, at
`
`the very least, this registration demonstrates that the United States Patent and Trademark Office
`
`(“PTO”): (i) has permitted the registration of marks comprised of HAMILTON and a disclairned
`
`term on the Principal Register without a claim of acquired distinctiveness; and (ii) has found
`
`such marks to have primary significances other than as a surname. See Response to Office Active
`
`dated June 21, 2017 at Exhibit A, p. 6. Several other examples, including multiple standalone
`
`HAMILTON registrations, are set forth below and in the attached Exhibit F.
`
`

`

`
`
`
`Mark
`Registration No.
`Disclaimer
`
`HAMILTON
`1,594,862
`None.
`
`
`HAMILTON EGGS
`2,381,300
`EGGS
`
`
`HAMILTON
`2,954,1 1 1
`None.
`
`
`
`
`
`
`
`
`HAMILTON SORTER
`3,233,076
`SORTER
`
`
`HAMILTON HARBOR YACHT CLUB
`3,576,874
`HARBOR YACHT CLUB
`
`
`HAMILTON MALL
`4,203,063
`MALL
`
`
`HAMILTON METALS
`
`4,382,684
`
`METALS
`
`HAMILTON SCIENTIFIC
`
`4,640,489
`
`SCIENTIFIC
`
`
`
`As a further basis for maintaining the refusal, the Examining Attorney also points to a
`
`number of registrations where the mark HAMILTON was registered under Section 2(f) or is on
`
`the Supplemental Register. The Examining Attorney contends that “these registrations are clear
`
`evidence that the office regards HAMILTON as a surname.” See Office Action dated July 19,
`
`2017 at p. 2. However, as demonstrated above, there is a comparable number of HAMILTON
`
`and HAMILTON + DISCLAIMED TERM(S) registrations on the Principal Register that do not
`
`claim acquired distinctiveness. This not only demonstrates that decisions are made on a case-by-
`
`case basis, but also, that the PTO has on numerous occasions disregarded and/or distinguished
`
`the findings in In re Hamilton Pharms Md, and has not treated the case as dispositive on the
`
`question of surname significance for all HAMILTON marks.
`
`2.
`
`Hamilton: An American Musical
`
`In its initial response, Applicant introduced a substantial amount of evidence about the
`
`popularity and pervasiveness of the Hamilton musical developed by Lin-Manuel Miranda, and
`
`set forth arguments as to why the primary meaning of the term HAMILTON in contemporary
`
`society is its significance as a Broadway musical. See Response to Office Action dated June 21,
`
`2017 at Section I.2(a) and Exhibits D. E, and F. In maintaining the refusal, the Examining
`
`Attorney seems to have taken the position that this evidence is irrelevant because “it is not clear
`
`whether a person who knew nothing about the subject matter of the play would immediately
`
`

`

`associate the play with the historical figure Alexander Hamilton.” However, this distorts the
`
`relevant questioniis the primary significance of HAMILTON a surname?iand perhaps stems
`
`from a misunderstanding of Applicant’s argument. Applicant’s position is not that Alexander
`
`Hamilton is a famous historical figure because of the Broadway musical. Rather, Applicant
`
`submits that because of the popularity and wide-spread success of the Hamilton musical, the
`
`purchasing public is likely to believe that the primaiy significance of applied-for mark is not
`
`merely a surname, but rather the Broadway musical itself. An online search for “HAMILTON"
`
`lends further support to this claim. Indeed, as Exhibit G reveals, 28 of the first 30 search results
`
`for HAMILTON pertain to the Broadway musical. Equally notable is the fact that there is not a
`
`single reference to HAMILTON as a sumame on the first four pages of the search results. If
`
`HAMILTON were primarily merely a surname, one would expect a search for “HAMILTON” to
`
`yield results for such persons, or at least a directory or listing of HAMILTON names. However,
`
`that is simply not the case. As a result, for the reasons set forth herein (and in Applicants
`
`Response to Office Action dated June 21, 2017), Applicant respectfully requests that the refusal
`
`to register
`
`the HAMILTON BROKERAGE ACCOUNT mark on the basis of surname
`
`significance be withdrawn.
`
`II.
`
`Conclusion
`
`In view of the foregoing, and having responded to all issues raised in the Office Action,
`
`this application is believed to be in condition for publication, and reconsideration and favorable
`
`action are respectfully requested.
`
`If it is detennined that the application is not in condition for
`
`allowance,
`
`the Examining Attorney is invited to initiate a telephone interview with the
`
`undersigned attorney to expedite prosecution of the present application.
`
`

`

`EXHIBIT A
`
`

`

`1118/2018
`
`10 essential facts about Alexander Hamilton on his birthday - National Constitution Center
`
`Constitution Daily Vblog)
`
`Snimt tonzrusntion from the Notional Constitution Center
`
`a (http://wwwfacebook. com/constitutionctr) a (https://twitter. com/ConstitutionCtr)
`. (https ://piusgoogie com/u/o/i09046318376672469692/posts)
`.(http://www..youtubecom/user/ConstitutionCenter?sub_confirmation:1)
`@(htth/www. pinterest. com/constitutionctrbmU (http://instagram com/constitutionctr)
`\(http://constitutioncenter.org/blog/feed/)
`
`Seart h ti‘is website.
`
`10 essential facts about Alexander Hamilton on his birthday
`January n, 206 by NCC Staff Ci'biog'iauthorfncc)
`
`492
`Share;
`
`394
`
`46
`
`On this day in 1755 or 1757, Alexander Hamilton was born in the Caribbean. if you need a quick primer on Hamilton, here are the essential facts about him.
`
`1. Where is Nevis and why do we care?
`
`2. Hamilton’s skills as a writer let him leave the Caribbean
`
`Hamilton was born on January 11, in either 1755 or 1757, on the island of Nevis in the British West indies. (There is a
`dispute among historians about his actual birth year.) Today, News and St. Kitts are one country, known as the
`Federation of Saint Kitts and News. His father was from Scotland; his mother from Nevis. Hamilton left the region as
`a teenager to live in North America.
`
`in August 1772, Hamilton’s letter to his father about a hurricane that struck Saint (mix was reprinted in a newspaper,
`the Royal Danish American Gazette. The locals were so impressed that they took up a collection to send Hamilton to a college in the British North American colonies.
`Princeton rejected Hamilton, but King’s College (later known as Columbia) accepted him.
`
`3. Hamilton fought with honor in the Revolutionary War
`
`Through his efforts as a volunteer, young Hamilton became General George Washington’s aide de camp, or his rightehand man. Hamilton also personally led an attack and
`charge at the Battle of Yorktown (/constitutionedailyeblog/orttheedayeyorktownespellsedoornforttheebritishf) on a British redoubt.
`
`4. Hamilton was a mostly self-taught lawyer
`
`After resigning his military commission, Hamilton was able to study the law and pass a legal examination within six months in 1782. He had been reading the law on his own
`in Nevis and at King’s College, and had studied with John Jay and William Paterson, two future Supreme Court Justices.
`
`5. He helped promote the Constitutional Convention of 1787
`
`Hamilton was agitated with the weak Confederation Congress and the Articles of Confederation (/constitutionedailyeblog/onethisedayeourefirsteflawedeconstitutionewente
`intoeeffectli), so he worked with James Madison and other Founders to hold the Annapolis Convention in September 1786. There, Hamilton introduced a resolution for
`more delegates "to meet at Philadelphia on the second Monday in May next, to take into consideration the situation ofthe United States.”
`
`6. Hamilton’s constitutional legacy was the Federalist Papers
`
`hitps:l/constitutioncenterorg/blogfl O—essentia|—facts—about—alexander—hamilton
`
`1/4
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`1118/2018
`
`10 essential facts about Alexander Hamilton on his birthday - National Constitution Center
`
`Hamilton wasn’ta big presence at the 1787 Convention in Philadelphia because he was the minority voice in the New York delegation. But he played a big role in helpingthe
`Constitution’s ratification as one of the three authors of the Federalist Papers (/constitutionadailyeblog/onethisadayatheifederalistepaperseareapublishedo, along With
`Madison and Jay. Hamilton wrote 51 of the 85 essays, which are still consulted today by scholars and the Supreme Court. But his authorship wasn’t made public until after
`his 1804 death.
`
`7. Hamilton founded the Treasury Department and strengthened the banking system
`
`if that wasn’t enough, President Washington appointed Hamilton as the first Secretary ofthe Treasury, when the new nation was facing a steep financial crisis. Hamilton
`brokered a solution to paying off the former colonies’ war debt, and then organized the Treasury Department as a powerful unit. Hamilton also formed the First Bank of
`the United States, and he was able to convince other nations that the United States was financially sound.
`
`8. Hamilton inspired the first American political party
`
`Hamilton’s moves as Treasury Secretary and as a proponent of a strong central government led to the unofficial formation ofthe Federalist Party by 1791. in response,
`leaders like James Madison and Thomas Jefferson formed a political faction known as the Republicans that directly objected to Hamilton and his ideas. (Washington
`approved of many Federalist principles but wasn’t a party member.) The partisan clashes between the two groups would persist until Hamilton’s death.
`
`9. Hamilton helped his own political enemy become President
`
`in the deadlocked 1800 presidential election, a House of Representatives controlled by the Federalists had two Republican candidates to choose from: Jefferson and Aaron
`Burr. Hamilton wrote a private letter to a House member urging that Jefferson, Hamilton’s political enemy, become the next Presrdent. “Mr. Burr loves nothing but himself
`iThinks of nothing but his own aggrandizementiand will be content with nothing short of permanent power in his own hands,” Hamilton wrote
`(http://wwwdigitalhistory.uh.edu/dispjextbookcfm?smtlD:38<psid:169). ”In a choice of Evils, let them take the least—Jefferson is in my View less dangerous than Burr.”
`
`10. The never-ending duel controversy
`
`The deadly duel (http://wp.me/pigiVOml) between Hamilton and Burr in July 1804 was years in the making; the two men had been rivals in New York before the 1800
`election, and Hamilton worked to deny Burr’s election to the New York governorship. After Hamilton wouldn’t retract an insult, the two men and their seconds met
`in Weehawken, New Jersey, wrth Burr shooting Hamilton, and Hamilton dying the next day.
`
`But What happened during the duel? Did Hamilton deliberately misfire? Or did someone introduce a hairetriggered pistol into the mix? Was Burr obligated under the
`dueling code to not shoot Hamilton? The only witnesses were the men’s seconds, who wrote a joint account of the incident. ”Both parties presented and fired in
`succession. The intervening time is not expressed, as the seconds do not precisely agree on that point. The fire of Colonel Burr took effect, and General Hamilton almost
`instantly fell,” goes the account, with the witnesses disagreeing on who shot when.
`
`Filed Under Founding Fathers (jblogg‘filteri'foundingrfathers)
`
`https:l/constitutioncenterorglblogfl O—essential—facts—about—alexander—hamilton
`
`2/4
`
`

`

`1/18/2018
`
`AEexander Hamilton fatally wounded in duet, Juiy 11, 1804 - POLITICO
`
`POLITICO
`
`
`
`"Hamilton" creator Lin-Manuel Miranda, center, takes his final performance curtain call at the Richard
`Rodgers Theatre on July 9 in New York. "Hamilton" is based on the life of Alexander Hamilton, | AP Photo
`
`httsz/www.poiiticocom/story/Zm6/07/hamiiton—fatally—wounded—in—dueI—july—11—1804-225227
`
`1/3
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`1/18/2018
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`Alexander Hamilton fatally wounded in duel, July 11, 1804 - POLITICO
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`Alexander Hamilton fatally wounded in duel, July11, 1804
`
`By ANDREW GLASS | 07/