Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  77/110858

 

The assigned trademark examining attorney has reviewed the referenced application, and has determined the following.

 

Search

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d); TMEP §704.02. 

 

Statutory Refusal – Mark Primarily Merely a Surname

Registration is refused because the proposed mark is primarily merely a surname.  Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §§1211 et seq.  The primary significance of the mark to the purchasing public determines whether a term is primarily merely a surname.  In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975).  The following five factors are used to determine whether a mark is primarily merely a surname: 

(1)   The rareness of the surname;

(2)   Whether anyone connected with applicant uses the mark as a surname;

(3)   Whether the term has any recognized meaning other than as a surname;

(4)   Whether the mark has the structure and pronunciation of a surname; and

(5)   Whether the mark is sufficiently stylized to remove its primary significance from that of a surname. 

In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995); TMEP §1211.01.   

There is no rule as to the kind or amount of evidence necessary to make out a prima facie showing that a term is primarily merely a surname.  This question must be resolved on a case-by-case basis.  See, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., Ltd., 230 USPQ 79 (TTAB 1986).  The entire record is examined to determine the surname significance of a term.  The following are examples of evidence that is generally considered to be relevant:  telephone directory listings; excerpted articles from computerized research databases; evidence in the record that the term is a surname; the manner of use on specimens; dictionary definitions of the term and evidence from dictionaries showing no definition of the term.  TMEP §1211.02(a). 

The attached evidence establishes the surname significance of the surname BOVA; the evidence shows that the surname is not rare.  See the attached evidence.  Moreover, stylization is not an issue as the mark is in standard character form.  Finally, the fact that the mark looks and sounds like a surname may contribute to a finding that the primary significance of the term is that of a surname.  In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988), aff’d, 883 F.2d 1026 (Fed. Cir. 1989); In re Petrin Corp., 231 USPQ 902 (TTAB 1986); TMEP §1211.01(a)(vi).  Consequently, the mark is primarily merely a surname. 

Opportunity to Respond

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirement.

 

Requirement

 

Request for Information

Applicant must directly answer the following question(s) pursuant to the authority granted the examining attorney by 37 C.F.R. §2.61(b): 

Is BOVA a surname? 

Does anyone associated with applicant’s company have the surname BOVA? 

Finally, applicant must indicate whether BOVA has any significance in the jewelry trade or industry or as applied to the services.  In addition, applicant must indicate how it arrived at the mark and why it selected this particular mark. 37 C.F.R. §2.61(b).

Please note that failure to fully comply with a request pursuant to 37 C.F.R. §2.61(b) is an independent basis for refusal and may result in the refusal of the entire application.  See In re DTI Partnership, L.L.P., 67 USPQ2d 1699 (TTAB 2003); In re SPX Corporation, 63 USPQ2d 1592 (TTAB 2002); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990).

 

 

If applicant has any questions or needs assistance in responding to the Office action, as outlined below, please telephone or email the assigned examining attorney.

 

 

 

/Tricia Sonneborn/

Trademark Examining Attorney

Law Office 110

phone (571) 272-9225

fax (571) 273-9110

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.