SN 77/636187
Mark – SMITH HOTEL
Michael A. Weiner, TM Examining Attorney
Law Office 108

RESPONSE TO OFFICE ACTION
DATED MARCH 13, 2009

ARGUMENT

Registration Refused – Mark is Primarily Merely a Surname

While Applicant admits that SMITH is a commonly used surname, in the context of this
application, the relevant consuming public would just as likely believe that SMITH is used in its
common dictionary definition, namely a tradesperson (see, attached Exhibit A, definition of
“smith” from Webster’s at yourdictionary.com). In that regard, while it is a surname, the mark is
not “primarily merely” a surname. Accordingly, the mark should be registrable on the principal
register and the rejection under Section 2(e)(4) should be withdrawn.

Anyone Connected with Applicant has the Mark as a Surname

Applicant states for the record that neither applicant nor applicant’s original founders has the
mark as a surname.

Mark Has any Recognized Meaning Other than as a Surname

The Examining Attorney has specifically asked whether the mark has any recognized meaning
other than as a surname. As stated above, applicant submits that the term “smith” is defined as a
tradesperson, for example, a silver smith, an iron smith, etc.

Respectfully submitted,

AMSTER ROTHSTEIN & EBENSTEIN LLP
Attorneys for Applicant

By /Chester Rothstein/
Chester Rothstein

437491.1
Smith Definition | Definition of Smith at Dictionary.com Page 1 of A
EXHIBIT 4
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smith

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Nearby Words –noun
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1. a worker in metal.
smelt out 2. a blacksmith. DON’T Pay For White Teeth
Learn the trick, discovered by a
smelt up
–verb (used with object) mom to turn yellow teeth white
smelter 3. to forge on an anvil; form by heating and pounding: to smith for less than $5 Learn more
smeltery armor.

Origin:
bef. 900; (n.) ME, OE; c. G Schmied, ON smithr, Goth -smitha; (v.)
ME smithen, OE smithian; c. ON smitha, Goth gasmith?n

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–noun
1. Adam, 1723–90, Scottish economist.
2. Alfred E(manuel), 1873–1944, U.S. political leader.
3. Bessie, 1894?–1937, U.S. singer.
4. Charles Henry (“Bill Arp” ), 1826–1903, U.S. humorist.
5. David, 1906–65, U.S. sculptor.
6. Edmond Kir?by [kur-bee] Show IPA , 1824–93,
Confederate general in the Civil War.
7. Francis Hopkinson, 1838–1915, U.S. novelist, painter, and
engineer.
8. George, 1840–76, English archaeologist and Assyriologist.
9. Hamilton Othanel, born 1931, U.S. microbiologist,
codiscoverer of restriction enzymes: Nobel prize 1978.
10. Hannah Whit?all [hwit-awl, wit-] Show IPA , 1832–1911,
U.S. writer and evangelist.
11. Ian Douglas, born 1919, Rhodesian political leader: prime
minister 1964–79.
12. Jed?e?di?ah Strong [jed-uh-dahy-uh -strawng, strong]
Show IPA , 1799–1831, U.S. trapper and explorer, one of the
mountain men in the early American West.
13. John, 1580–1631, English adventurer and colonist in Virginia.
14. Joseph, 1805–44, U.S. religious leader: founded the Church
of Jesus Christ of Latter-day Saints.
15. Julia Ev?e?li?na [ev-uh-lahy-nuh] Show IPA , 1792–1886,
U.S. suffragist.
16. Kathryn Elizabeth (Kate ), 1909–86, U.S. singer.
17. Lo?gan Pear?sall [loh-guh n peer-sawl] Show IPA ,
1865–1946, U.S. essayist in England.

http://dictionary.reference.com/browse/smith 9/10/2009