Hello Quincy, thanks for your feedback on my post.
First, I'm not sure quite what you mean by "one does not 'trademark' a name." An applicant can certainly trademark a name, an image, a sound, or even a color to identify a source of a product/service. The applicant must be using the mark in commerce, or possess a bona fine good faith intent to use the mark in the immediate future, at the time of trademark registration.
Perhaps you mean that a trademark acquires common law rights determined by each state when used in a particular geographical region, but an individual or entity must file a trademark application with the USPTO in order to obtain federal TM rights, and an application to register a standard character trademark name may be submitted prior to actual use.
Second, if a USPTO application/registration shows a status of dead or abandoned, it means that specific application or registration is no longer under prosecution or pending within the USPTO, and would not be cited by a trademark examiner against the applicant. You are correct that the mark may be revived by the owner, but the revival must be done so in a timely manner after going abandoned and for a reasonable cause. So, if "Big Hats" in it's current status is all that is uncovered by searching TESS, it should likely not be an obstacle, especially if it has gone abandoned some time ago.
Third, preparing an OA to combat a likelihood of confusion argument would certainly be arduous, but not insurmountable. "The degree of distinctiveness – or, on the other hand, descriptiveness – of a designation can be determined only by considering it in relation to the specific goods or services." Remington Products, Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 1580, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e., in connection with the goods). As stated in H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), quoting Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 847, 129 USPQ 411, 413 (C.C.P.A. 1961), “[t]he name of a thing is in fact the ultimate in descriptiveness.”
The question would be whether or not the addition of "Extreme" followed by the generic words "Big" and "Hats" constitutes a significant enough degree of distinctiveness from Big Hats. If the applicant was trying to trademark "Extreme Google" or "Extreme N.i.k.e", whereby the static term is not a known word in the English language, than the applicant's mark would be rejected because of the obvious piggybacking on Google's uniquely concocted name used for representing their brand. There would be a very high probability of confusing Extreme Google with Google if encountered by your average web surfer. However, I would argue here that because the term 'Big Hats' comprises generic words that there are so few alternatives to differentiate brands of big hat providers, and that adding "Extreme" makes this particular mark appropriately distinct considering it in relation to the specific goods of hats. This would require a fair amount of research into case law to find specific examples to support the client's side.
