To:
`Subject:
`Sent:
`Sent As:
`
`THOMAS DIETRICH(tom@smcarthurlaw.com)
`U.S. Trademark Application Serial No. 97738815 - ABRAMS
`July 11, 2023 01:17:32 PM EDT
`tmng.notices@uspto.gov
`
`Attachments
`
`screencapture-en-wikipedia-org-wiki-Abrams_-surname-16890415160801
`screencapture-news-yahoo-com-j-j-abrams-disney-shooting-033200911-html-
`16890458629111
`screencapture-www-hollywoodreporter-com-movies-movie-news-jj-abrams-returns-to-
`movies-billy-summers-1235304213-16890462553031
`screencapture-www-washingtonpost-com-education-2023-04-05-stacey-abrams-joins-
`howard-university-16890465275961
`screencapture-www-nytimes-com-2022-11-10-us-politics-stacey-abrams-georgia-governor-
`election-html-16890468927041
`screencapture-www-yahoo-com-entertainment-dan-abrams-mocks-woke-espn-151138816-
`html-16890477461651
`screencapture-www-nytimes-com-2015-07-16-style-the-doting-dad-side-of-dan-abrams-html-
`16890480533201
`screencapture-www-politico-com-news-2020-01-31-stacey-abrams-president-2040-109869-
`16890798701361
`screencapture-www-washingtonpost-com-sports-2023-06-23-cj-abrams-struggles-nationals-
`16890806188581
`screencapture-law-duke-edu-news-first-amendment-legend-abrams-urges-broad-protections-
`free-speech-16890812101981
`screencapture-www-usmagazine-com-entertainment-news-taylor-swift-duets-with-gracie-
`abrams-at-eras-tour-for-1st-time-16890822686801
`screencapture-www-rhymezone-com-r-rhyme-cgi-16890825042751
`screencapture-lookwayup-com-lwu-exe-lwu-d-16890826072201
`screencapture-www-cnn-com-2023-07-03-politics-elliott-abrams-public-diplomacy-
`nomination-index-html-16890834458951
`7070235
`3886835
`4914017
`5207614
`5602385
`5331418
`2371222
`screencapture-advance-lexis-com-publicrecordshome-16890937985621
`screencapture-advance-lexis-com-publicrecordshome-16890939630851
`screencapture-advance-lexis-com-publicrecordshome-16890946328121
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No.  97738815
`
`

`

`Mark:   ABRAMS
`
`Correspondence Address:  
`THOMAS DIETRICH
`THE MCARTHUR LAW FIRM, PC
`9465 WILSHIRE BLVD., SUITE 300
`BEVERLY HILLS CA 90212
`UNITED STATES
`
`Applicant:   Pro Eagle LLC
`
`Reference/Docket No.  N/A
`
`Correspondence Email Address:   tom@smcarthurlaw.com
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION DENIED
`
`Issue date:   July 11, 2023
`
`Applicant’s request for reconsideration is denied.   See 37 C.F.R. §2.63(b)(3).  The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not: (1)
`raise a new issue, (2) resolve the outstanding issue, (3) provide any new or compelling evidence with
`regard to the outstanding issue, or (4) present analysis and arguments that were persuasive or shed new
`light on the outstanding issue.  TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`Accordingly, the following refusal made final in the Office action dated April 6, 2023 is  maintained
`and continued: 
`
`
`•
`
`Refusal under §2(e)(4) of the Trademark Act
`
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`As the Federal Circuit has made clear,  an applicant’s mark is primarily merely a surname if the
`surname, when viewed in connection with the applicant’s recited goods, “‘is the primary significance of
`the mark as a whole to the purchasing public’” (emphasis added).    Earnhardt v. Kerry Earnhardt, Inc.,
`864 F.3d 1374, 1377, 123 USPQ2d 1411, 1413  (Fed. Cir. 2017)  (quoting  In re Hutchinson Tech. Inc.,
`852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988)); TMEP §1211.01.
`
`In this case, the examining attorney has established with abundant evidence that Abrams is a common
`surname well known to the purchasing public.  See attached news reports and articles, as well as
`dictionary definitions.  The examining attorney notes that t he determination of whether a surname is
`common or rare is not done solely by comparing the number of listings of the surname to the total
`number of listings in a computerized database, because even the most common surname would
`represent only a small fraction of the database. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004).
`Rather, if a surname appears routinely in news reports or articles and receives media publicity so as to
`be broadly exposed to the general public, then such surname is not rare and its primary significance to
`purchasers would be that of a surname, as is the case here. See In re Beds & Bars Ltd., 122 USPQ2d
`
`

`

`1546, 1551 (TTAB 2017); In re Gregory, 70 USPQ2d at 1795; TMEP §1211.01(a)(v).  
`
`Much of applicant's argument in favor of registration on the Principal Register rests on its claims that
`"the surname 'Abrams' is not connected with anyone associated with Applicant," and that it "chose the
`mark specifically because it is closely associated with something that is not a surname -- the Abrams
`tank."  However, the fact that “a proposed mark is not applicant’s surname, or the surname of an officer
`or employee, does not tend to establish one way or the other whether the proposed mark would be
`perceived as a surname.” In re Thermo LabSystems Inc., 85 USPQ2d 1285, 1287 (TTAB 2007)
`(quoting In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004)); see In re Adlon Brand GmbH & Co.
`KG, 120 USPQ2d 1717, 1724 (TTAB 2016).  In a surname analysis, the absence of a person connected
`with applicant that has this term as a surname is a neutral factor. In re Thermo LabSystems Inc., 85
`USPQ2d at 1287.  
`
`
`Moreover, applicant's own  subjective desire to associate its products with the U.S. Army's Abrams tank
`(famously named after General Creighton Abrams) is not relevant to the legal standard at issue in this
`case, which is the primary significance of the surname Abrams "to the purchasing public."   The
`examining attorney previously submitted the Army's  Registration No. 1359136 for ABRAMS (in typed
`format) for "tanks," which was registered under §2(f) of the Trademark Act precisely because Abrams
`is primarily merely a surname, and therefore not inherently distinctive. 
`
`However, in an attempt to bolster its argument that the surname Abrams is inherently distinctive in this
`case because applicant wishes to make an association with the Army's Abrams tank, applicant states
`that "[u]ntil 1955 or so, 'McDonalds' was merely a surname.  But after selling millions of hamburgers,
`the public came to associate the surname with fast food restaurants."  It is noteworthy that applicant
`highlights McDonald's®restaurants, because its argument is directly at odds with the well-settled rule
`that evidence of a term’s recognition and fame (e.g., consumer surveys, promotional expenditures) is
`only relevant to prove acquired distinctiveness under Trademark Act Section 2(f), and is not pertinent
`to a determination of surname significance.   SeeIn re McDonald’s Corp., 230 USPQ 304, 307 (TTAB
`1986) (holding McDONALD’S primarily merely a surname despite applicant’s evidence of secondary
`meaning, noting that, absent a claim of secondary meaning under Section 2(f), “registration must be
`refused”);  In re Cazes, 21 USPQ2d 1796, 1797 (TTAB 1991) (holding BRASSERIE LIPP primarily
`merely a surname despite applicant’s evidence of the mark’s fame, noting that applicant did not make a
`Section 2(f) claim and, without a formal claim of distinctiveness, “evidence of fame [could not] serve
`as the basis for allowing registration of applicant’s mark”);  TMEP §1211.02(b)(vii).
`
`Finally, the examining attorney notes that Abrams has the structure and pronunciation of a surname. 
`The examining attorney has attached evidence showing similar surnames Abraham, Abram and
`Abrahams appearing 87238, 14666 and 7067   times, respectively, as surnames in  the Lexis® surname
`database, which is a weekly updated directory of cell phone and other phone numbers (such as voice
`over IP) from various data providers.   See attached printouts.   Evidence that a term has the structure
`and pronunciation of a surname contributes to a finding that the primary significance of the term is that
`of a surname. In re tapio GmbH, 2020 USPQ2d 11387, at *12 (TTAB 2020) (citing In re Giger, 78
`USPQ2d 1405, 1409 (TTAB 2006)); In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1280 (TTAB
`2016); see; TMEP §1211.01(a)(vi).
`
`In short, the evidence of record overwhelmingly demonstrates that the applied-for mark is not
`inherently distinctive because its primary significance to the purchasing public is that of a surname. 
`The examining attorney therefore continues and maintains his final refusal under §2(e)(4) of the
`Trademark Act.
`
`

`

`     
`Since  applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board
`will be notified to resume the appeal.   See TMEP §715.04(a).  
`
`
`/Nick Altree/
`Nick Altree
`Examining Attorney
`LO107--LAW OFFICE 107
`(571) 272-9336
`Nick.Altree@uspto.gov
`
`
`
`

`

`
`
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`References
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`Abrams(surname)
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`From Wikipedia, the free encyclopedia
`Abramsis a surnamerelated to Abrahams, Abram, Abrahm and Abraham.It developed independently in the Jewish diaspora, England, Germany and the
`Netherlands."The nameand its variants have been found in England since the medieval erain the Domesday Book and Hundred Rolls"! As of2014,it is,
`most commonly foundin the United States.Notable people with the surnameinclude:
`« A,
`J, Abrams(bor 1986), American basketball player
`AlbertAbrams (1863-1924), American physician
`Aruna Abrams (born 1975), American singer
`Austin Abrams (born 1996), American actor
`Cal Abrams(1924-1997), American baseball player
`Carol Ann Abrams (1942-2012), Americantelevision andfilm producer
`Charles Abrams (1901-1970), Polish-American lawyer
`CJ Abrams (born 2000), American baseball player
`Creighton Williams Abrams (1914-1974), American army officer
`Dan Abrams (born 1966), Americantelevision talk show host
`Detrick Abrams (barn 1997), American football player
`Elliott Abrams (born 1948), American foreign policy official
`ElliotAbrams (meteorclogist) (bom 1947), American meteorologist
`Flayd Abrams (born 1936), American attomey
`GeoffAbrams (born 1978). American tennis player
`Gerald W. Abrams(born 1939), Americantelevision producer
`Gracie Abrams (born 1999), American singer-songwriter
`Harry N. Abrams, American bookpublisher
`Herbert Abrams (1921-2003), American painter
`Herbert L. Abrams(1920-2006), American doctor
`J,
`J. Abrams (born 1966), American producer
`JamesAtkinson Abrams(1844-1914), Canadianpolitician
`John Abrams(field hockey)(born 1934), New Zealandfield hockey player
`John N. Abrams (1946-2018), American army officer
`Kevin Abrams (disambiguation), multiple people
`LeRoy Abrams (1874-1956), American botanist
`LinkAbrams (born 1973), American-New Zealand basketball player
`Mark Abrams (1906-1994), English social scientist
`Melville E. Abrams (1912-1966), NewYork politician
`M. H. Abrams (1912-2015), Americanliterary critic
`MikeAbrams (psychologist) (1953-), American Psychologist and author
`Morris Abrams (1908-1981), American inventor
`Richard Abrams(disambiguation), multiple people
`Robert Abrams (born 1938), American politician
`Robert B. Abrams(born 1960}, American general
`Roz Abrams (born 1948), American television journalist
`
`

`

`* Ruth Abrams (1930-2019), Americanjudge
`* Sam Abrams (bom 1935), American poet
`* Stacey Abrams(oom 1973), American politician
`* Stephen Abrams (1988-2012), Americanscholarandactivist
`« SteveAbrams (bom 1949), American politician
`© William Abrams (1785-1844), English businessman
`* W. J. Abrams (1829-1900), American businessmanandpolitician
`
`References [exit]
`1. "Abrams Name Meaning &Abrams Family History atAncestry.comé" et. Ancestry.com. Retrieved 29 June 2021
`2. * “Surname Database: Abrams Last Name Origin". The Internet SumameDatabase. Retrieved 29 June 2021.
`3.“ “Abrams Surname Origin, Meaning & Last Name History”:2. Forebears. Retrieved 29 June 2021
`See also [edit]
`* Abrams(disambiguation)
`* Abram (name)
`NTE
`Inide],
`Given names and surnamesassociated withAbrahami/ Ibrahim
`Given name
`Abraham + Abrahdo/Abrado + Abram + Abe + Avram + Brahim + Bram+|brahim/ibrahim/lbraheem/Ebrahim/Ebraheem+Ibrahima
`Surname
`Abraham - Abrahamczyk - Abrahami - Abrahamowicz - Abrahams - Abrahamsen- Abrahamson - Abrahamsson «
`from Abraham
`Abrahamyan/Abrahamian/Aprahamyan + Abrahamz « Abrah’olAbra&o + Abrahim « Brahm + Brahms + Bram
`Abram + Abramashvili » Abramavicius + Abramchuk + Abramczyk + Abramenko + Abramenkov+ Abrami+ Abramié » Abramidze +
`Sumame
`Abramishvili . Abramovich « Abramo - Abramofsky + Abramoski - Abramov- Abramovic «
`from Abram
`Abramowicz/Abramovich’Abramovitz/Abramowitz - Abramovsky - Abramowski - Abrams.- Abramsky - Abramson - Abramsson
`Abramtsev - Abramyan - Abromaitis - Abromavicius - Abromeit
`Sumame
`Avraham + Avrahami- Avram + Avramenko - Avramescu « Avrami - Avramidis - Avramidou - Avramav - Avramavié
`from Avraham
`Surname
`
`Brahim - Ebrahimi- !brahim/Ebrahim - \bragimow/brahimov-iprahimodlu- tbrahimovic
`fromIbrahim
`Abbrahim - bin Ibrahim/ben Ibrahim/bint Ibrahim - Ibn Ibrahim - Ben Brahim/bin Brahim
`Patronym
`
`
`/fan internallinkintending to referto @ specific personJed you to this page, you may wish to change that linkbyadding the person's given names) tothe link.
`ue This page lists people with the surmame Abrams
`
`
`
` Categories: Surnames | English-language sumames | Jewish sumames | Patronymic surnames.
`
`
`This page waslastedited on 20 May 2023, at 21:17 (UTC).
`Text is available under the Creative CommonsAttribution-ShareAlike License 4.0: additional terms may apply. By using this site, you agree to the Termsof Use and Privacy Policy. Wikipedia® is a registered trademark ofthe Wikimedia Foundation,
`Privacy policy About Wikipedia Disclaimers Contact Wikipedia Code of Conduct Mobile view Developers Statistics Cookie statement
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`
`The Santa Fe New Mexican
`
`EROSCoeaed
`
`J.J. Abrams, Disney shooting in, around Albuquerque
`1
`Teya Vitu, The Santa Fe New Mexican
`May 4, 2023-1 min read
`
`f
`=
`w
`
`In this article:
`J.J. Abrams
`¥ americanfilm and
`
`Josh Holloway
`American actor
`
`q
`
`|) TRENDING
`May 4—J.J. Abrams, the director behind 2000s television mainstaysAlias
`The ‘Quiet Disease’ Lingering in
`and Lost and more recently the movie, Star Wars: The Rise of Skywalker,
`Our Mouths
`The New York Times
`4 minread
`has a newtelevision series called Duster in production in New Mexico.
`Multiple people have died after
`Also, Walt Disney Pictures will film through May in and around Albuquerque
`attempting ‘boat jumping’
`challenge on TikTok
`on a Latino-centric reimagining of the 2014 film Alexander and theTerrible,
`TODAY-2minrea
`Horrible, No Good, Very Bad Day.
`Maria Menounosshowsscars
`fromcancer surgeryin joyful
`Duster reunites Abrams with Josh Holloway from Lost and Greg Grunberg
`
`bikini selfie: God blessed me"
`
`
`from Alias and an earlier Abrams creationFelicity. Rachel Hilson, Keith TODAY©2 min read
`
`David and SydneyElisabeth also star.
`It is being filmed in Albuquerque,
`James Lewis, prime suspect in
`the Tylenol murders, found
`Moriarty, Belen, Gallup, Sandia Pueblo and Laguna Pueblo, according to the
`dead
`New Mexico Film Office.
`CBS News
`2min read
`Residents of a wealthy gated
`Dusteris employing more than 4,000 New Mexicans,including 350 crew
`community in Southern
`members and 50 principal actors, the film office reported.
`California weregiven20...
`INSIDER+2 min read
`ADVERTISEMENT
`
`
`
`

`

`a
`
`TestesRCCL
`Our experts oncall.
`
`Set in 1972, Dusterfollows the first Black female FBI agent seeking to take
`downa crime syndicate in the Southwest. The eight-episode serieswill
`appear on HBO Max. The Max Original/Warner Bros. series is produced by
`
`Abrams’ Bad Robot Productions and LaToya Morgan's Tinker Toy
`elm elaClee
`
`=
`,
`Productions. Abrams and Morgan wrotethefirst two episodes, which are
`Latest weatherwith Leslie Lopez
`
`being directed by Steph Green. KABC-LosAngele
`Also in New Mexico, Disney's Alexander and the Terrible, Horrible, No Good,
`Very Bad Daystars Eva Longoria, also an executive producer, and Cheech
`Marin, whoin late April replaced original cast member George Lopez.
`
`}
`rm
`Thefilm is directed by Marvin Lemus with screenplay by Matt LopezpoeaaenEee)
`{ooe Mixing With
`
`louds; Quiterer
`
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`LeRoy
`6 May, 202
`Cool...
`| wish | could get back to doing backgroundin someof these NM madefilms... Cry Macho had a
`little bit of filming at the edge ofthe village where| live, and across the flats to the next canyonnorth
`
`The film follows 11-year-old Alexander (Thom Nemer)and his family on an
`epic road trip.
`Alexanderfilmed April 26-28 in Socorro.
`
`Deadline reportsthefilm will appear on Disney+.
`1Comment
`of uslll Vary ond for NM eranamvull!
`
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`JJ. Abrams, WarnerBros. Teamfor Adaptationof
`Stephen King Crime Novel ‘Billy Summers
`
`It's unclearif Abrams, who hasn't directed a movie since 2019's'Rise of Skywalker, will helmthe adaptation.
`BY BORYS KIT GZ]
`FEBRUARY 3, 2023 11:35AM
`
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` JJ.Abrams pave BENETI/GETTY IMAGE
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`+)(8)[|<][-
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`divavianongoing
`
`¥K JJ.AbramsandhisBadRobotbannerhaveteamedupwithWarner
`
`Bros,for the feature adaptationof Stephen King’s 2021 novel Billy
`Summers.
`
`4">
`
`Appian Waywill also produce the project, whichis being written by Ed Zwick
`and Marshall Herskovitz.
`
`A yearago, Bad Robot wasdevelopingthe IP asa limited series with Zwick and
`Herskovitz attached to adapt, and Zwick lookingto direct a goodportionofthe
`episodes,if notall.
`Not one of King’s horrornovels, Susmers focuses on a 44-year-old hitman, the
`eponymousBilly Summers, whois considering retirement whenhe accepts one
`last job from a regularclient.(“Onelast job” is always synonymouswith“Things
`go awry. but we'll get to that in a moment.) Taking up a coverstory that he is a
`novelist, Summers ensconceshimselfin a small townasheprepsforthe hit, and
`in his spare time actually begins to write a novel, which turnsintohislife story,
`fromhislittle sister being killed by their mother's boyfriend to him becoming a
`decoratedsniper.
`
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`Movies
`Amazon Studios NabsJ.J.
`Abrams, Imax’s 'The Blue
`
`Angels’ Documentary
`
`5
`
`q Movies
`AnneHathaway, ‘It Follows’
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`Mitchell Team for Warners
`Bros. Feature
`
`Thehit ... goes awry whenthe regularclient doesn't pay and Summers escapes a
`trap.Hislife gets even more complicated whenhefindsout there's a bounty on
`his head, and he savesa rape victim namedAlice. SummersandAlice then end
`up ona cross-country journeyto rectify the hitman’s manywrongs.
`
`The book wascritically well-received uponits release.
`
`It is unclearifAbrams woulddirect BillySummers. As a featuresdirector,
`Abrams has almost exclusively hewed towardestablished properties. He made
`his feature debut with Mission: Impossible III(2006), the Tom Cruisefilmthat
`helpedrevitalized the franchiseafterthe previous installment was poorly
`received six years earlier. Abramsthenpivotedto relaunch the Star Trek galaxy
`withthe 2009 reboot that starred Chris Pine and Zachary Quinto. He then
`directed the Spielbergian passion project — andhis only original movie — Super
`8 in 2011 before helming Star Trek: into Darkness (2013).
`
`oO
`
`‘Mission: Impossible 7’ After
`COVID Shutdowns: "We Dreamed
`AboutIt’
`BY HILARY LEWIS.
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`Hugh Jackman Dons
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`aay YellowWolverine
`Photo
`BY AARON COUCH
`
`‘NapoleonTrailer:
`Joaquin Phoenix and
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`‘IndianaJones and the
`Dial of Destiny’: VFX
`Team on Creating a
`Young Harrison Ford and
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`Villain Survived That
`‘Train Fall
`BY CAROLYN GIARDINA
`
`
`In the years since Rise ofSkywalker, Abramshas focused ontelevision, the
`mediumin which he made a namefor himselfwithhits suchas Felicity, Alias
`andLost. As part of a massive overall deal between Bad Robot and Warners,
`
`
`
`
`
`Before Into Darkness arrived in theaters, he surprised Hollywoodbysigning on
`to relaunchthe galaxy far, far away with Star Wars: The Force Awakens, the 2015
`filmthat introduced the franchise to a new generation and was a commercial
`and critical success. He returned to Star Wars onelast time to close out the
`sequeltrilogy with The Rise ofSkywatker(2019), a filmthat, thoughit took in
`morethan$1 billionat the box office, was notas well received by hard-core fans
`orcritics (consider that Force Awakens made roughly double that).
` b
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`Abrams has been developing projects suchas the pricey Demimonde for HBO
`Max, whichwasscrapped amid the WarnerBros. Discovery merger,as well as
`several DC projects. Manyofthe latter have been waylaid by the creation ofDC
`Studios, run byJames Gunnand PeterSafran, although his Black Superman.
`project, being written by Ta-Nehisi Coates and on whichheis a producer,
`remainsin active development. am
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