Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77810076 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

This is a supplemental response to the Office Action e-mailed on November 25, 2009.  The Applicant submitted a response earlier today and now supplements that response with the following additional argument supporting a withdrawal of the refusal based on the Examiner's argument the mark BROOKS is primarily merely a surname.

            The term BROOKS is not primarily merely a surname because it has a meaning and significance in addition to its significance as a surname.  The mark BROOKS is the plural form of the common and plain English word "brook" which is listed and identified in nearly every English dictionary as being a small body of water or marshy ground:

 

Merriam-Webster's on-line English Dictionary defines "brook" as meaning:

 

Function: noun

Etymology: Middle English, from Old English broc; akin to Old High German bruoh marshy ground

Date: before 12th century

 

The Microsoft On-line Encarta dictionary defines "brook" as meaning:

 

brook [ brook ] (plural brooks)

 

noun 

 

Definition:  small stream: a small freshwater stream

 

The Cambridge On-line dictionary defines "brook" as meaning:

Definition:  a small stream

 

I could hear the sound of a babbling brook.

           

            If there is a readily recognized meaning of a term, apart from its surname significance, such that the primary significance of the term is not that of a surname, registration should be granted on the Principal Register without evidence of acquired distinctiveness. See In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (the relatively rare surname HACKLER held not primarily merely a surname, in light of dictionary meaning); Fisher Radio Corp. v. Bird Electronic Corp., 162 USPQ 265 (TTAB 1969) (BIRD held not primarily merely a surname despite surname significance); In re Hunt Electronics Co., 155 USPQ 606 (TTAB 1967) (HUNT held not primarily merely a surname despite surname significance).

 

            Accordingly, the surname refusal should be withdrawn on this ground, independent of the reasons set forth in the previously submitted response to the Office Action.

 

SIGNATURE(S)
Response Signature
Signature: /Richard S. Vermut/     Date: 05/24/2010
Signatory's Name: Richard S. Vermut
Signatory's Position: Attorney for Applicant

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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.

        
Serial Number: 77810076
Internet Transmission Date: Mon May 24 16:42:22 EDT 2010
TEAS Stamp: USPTO/ROA-XXX.X.XX.XXX-20100524164222094
962-77810076-46071bf3d89f3bec13a111fd64d
6732ca2-N/A-N/A-20100524163106470931