Offc Action Outgoing

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

(2) Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).

37 C.F.R. §§11.1, 11.14; TMEP §602.

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. TMEP §602.06(b). Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. See TMEP §§602.03, 712.03.

SEARCH OF OFFICE’S DATABASE OF MARKS

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

MARK IS PRIMARILY MERELY A SURNAME

Registration is refused because the applied-for mark is primarily merely a surname. Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); see TMEP §1211. 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, 17-18, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (C.C.P.A. 1975); see TMEP §§1211, 1211.01.

Please see the attached evidence from the Lexis/Nexis Research Database, establishing the surname significance of the surname ISCA. This evidence shows the applied-for mark appearing 14 times as a surname in a nationwide telephone directory of names.

The following five factors are used to determine whether a mark is primarily merelya surname:

(1) Whether the surname is rare;

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

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

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

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

In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-34 (TTAB 1995); TMEP §1211.01.

The term ISCA appears to have no meaning other than as a surname, and it has the structure and pronunciation of a surname. It is not shown in any stylized form that would detract from its surname significance.

Although “ISCA” appears to be a relatively rare surname, a rare surname may be unregistrable under Trademark Act Section 2(e)(4) if its primary significance to purchasers is that of a surname. E.g., In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); In re Giger, 78 USPQ2d 1405 (TTAB 2006); see TMEP §1211.01(a)(v). There is no minimum number of telephone directory listings needed to prove that a mark is primarily merely a surname. See TMEP §1211.02(b)(i); see, e.g., In re Petrin Corp., 231 USPQ 902 (TTAB 1986).

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. TMEP §1211.02(a); see, e.g., In re Monotype Corp. PLC, 14 USPQ2d 1070 (TTAB 1989); In re Pohang Iron & Steel Co., 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 issue of determining whether a surname is common or rare is not determined solely by comparing the number of listings of the surname in a computerized database with the total number of listings in that database, because even the most common surname would represent only a small fraction of such a database. Rather, if a surname appears routinely in news reports, articles and other media as to be broadly exposed to the general public, then such surname is not rare and would be perceived by the public as primarily merely a surname. In re Gregory, 70 USPQ2d 1792, 1795 (TTAB 2004); see TMEP §1211.01(a)(v).

A mark deemed primarily merely a surname may be registered on the Principal Register under Trademark Act Section 2(f) by satisfying one of the following:

(1) Submitting a claim of ownership of one or more prior registrations on the Principal Register for a mark that is the same as the mark in the application and for the same or related goods and/or services. 37 C.F.R. §2.41(b); TMEP §1212.04. The following wording is suggested: “The mark has become distinctive under Section 2(f) of the goods or services as evidenced by ownership of U.S. Registration No(s). _____on the Principal Register for the same mark for related goods or services.” TMEP §1212.04(e).;

(2) Submitting the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.” 37 C.F.R. §2.41(b); TMEP §1212.05(d).; or

(3) Submitting actual evidence of acquired distinctiveness. 37 C.F.R. §2.41(a); TMEP §1212.06, Such evidence may include the following: examples of advertising and promotional materials that specifically promote the applied-for mark as a trademark or service mark in the United States; dollar figures for advertising devoted to such promotion; dealer and consumer statements of recognition of the applied-for mark as a trademark or service mark; and any other evidence that establishes recognition of the applied-for mark as a source-identifier for the goods and/or services. See In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp. of Am., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq.

Trademark Act Section 2(f), 15 U.S.C. §1052(f); see 37 C.F.R. §2.41; TMEP §§1211, 1212.

IMPORTANT NOTE: Applicant cannot overcome the refusal by amending the application to the Supplemental Register, because a mark in an application under §66(a) of the Trademark Act is not eligible for registration on the Supplemental Register. Trademark Act Section 68(a)(4), 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c); TMEP §§801.02(b), 815, 816.01 and 1904.02(c).

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. Applicant must respond to the requirement(s) set forth below.

TRANSLATION OF MARK

Applicant must submit an English translation of all foreign wording in the mark. 37 C.F.R. §2.32(a)(9); see TMEP §809. In the present case, the wording “ISCA” requires translation.

The following translation statement is suggested: “The English translation of ISCA in the mark is ______.” TMEP §809.02.

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

Applicant must explain whether “ISCA” has any meaning or significance in the industry in which the goods are manufactured, or if such wording is a “term of art” within applicant’s industry. Applicant must also explain whether this wording identifies a geographic place. See 37 C.F.R. §2.61(b); TMEP §814.

Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

FORMAT FOR RESPONSE

There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.

The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

/Esther A. Belenker/

Trademark Examining Attorney

Law Office 111

Tel: 571/272-9125

Fax: 571/273-9125

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

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Print Request: All

Time of Request: Friday, March 13, 2009 10:24:02 EST

Number of Lines: 58

Print Number: 1823:145697347

Client ID/Project Name:

Note:

Research Information:

Surname Search

last-name(ISCA) maxresults(500)

Search:	Public Records : Surname Search
Terms:	last-name(ISCA) maxresults(500)

Total number found: 14
No.	Name	Address	Phone

1.	ISCA, ANDY	113 MAIN ST COLUMBIA, LA 71418	318-649-2674

2.	ISCA, BARBARA	3 ALBANY AVE ROUND LAKE, NY 12151	518-899-2786

3.	ISCA, DAVID	MACOMB TOWNSHIP, MI 48042	586-228-7316

4.	ISCA, EMMA	1536 JULIA GOLDBACH AVE BOHEMIA, NY 11716-1506	631-589-7113

5.	ISCA, FRANK J	100 W HICKORY GROVE RD APT C4 BLOOMFIELD, MI 48304-2161	248-335-6281

6.	ISCA, FRANK	957 SUND ST NEENAH, WI 54956-3908	920-729-1851

7.	ISCA, GIOVANNI	PARKVIEW LN IRVINE, CA 92604

8.	ISCA, GIOVANNI	N PLACENTIA AVE FULLERTON, CA 92870

9.	ISCA, JOSEPH	14022 LINDSAY CT FORT WAYNE, IN 46814-9796	260-625-1023

10.	ISCA, JOSEPH	42393 WILLOW TREE LN W CLINTON TWP, MI 48038-5216	586-228-1179

11.	ISCA, JOSEPH	FORT WAYNE, IN 46802	260-625-1023

12.	ISCA, TARA	EAGLE RUN IRVINE, CA 92604

13.	ISCA, VICTOR	3 ALBANY AVE ROUND LAKE, NY 12151	518-899-2786

14.	ISCA, WILLIAM S	VALDEZ TRLR NO14 VALDEZ, AK 99686	907-835-3911

LexisNexis, a division of Reed Elsevier

Search:	Public Records : Surname Search
Terms:	last-name(ISCA) maxresults(500)
Date/Time:	Friday, March 13, 2009 10:23 AM

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Time of Request: Friday, March 13, 2009 10:24:02 EST

Print Number: 1823:145697347

Number of Lines: 58

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Send To: WALKER, DENISE

TRADEMARK LAW LIBRARY

600 DULANY ST

ALEXANDRIA, VA 22314-5790