sample trademark trial and appeal board (ttab) ex parte appeal brief

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ESTTA Tracking number: ESTTA320003Filing date: 12/03/2009

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 77502609

Applicant Bovis, Nick

Applied for Mark BOVIS FOODS

CorrespondenceAddress

ERIK M. PELTONERIK M. PELTON & ASSOCIATES, PLLCPO BOX 100637ARLINGTON, VA 22210-3637UNITED [email protected]

Submission Appeal Brief

Attachments BOVIS FOODS - Ex Parte Appeal FINAL.pdf ( 13 pages )(42718 bytes )

Filer's Name Erik M. Pelton

Filer's e-mail [email protected]

Signature /ErikMPelton/

Date 12/03/2009

http://estta.uspto.gov

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Serial No. 77502609

Mark: BOVIS FOODS

Applicant: Nick Bovis

Examining Attorney: Jason F. TurnerLaw Office 108

EX PARTE APPEAL

APPLICANT’S BRIEF

Applicant’s Brief - Ex Parte Appeal: SN 77502609 i

TABLE OF CONTENTS

INDEX OF CITATIONS.......................................................................................................... ii

DESCRIPTION OF RECORD ................................................................................................. 1

A. Prosecution History........................................................................................................ 1

B. Examining Attorney’s Evidence .................................................................................... 1

C. Applicant’s Evidence ..................................................................................................... 2

ARGUMENT............................................................................................................................ 3

A. Legal Standard ............................................................................................................... 3

B. Analysis.......................................................................................................................... 4

1. BOVIS is an extremely rare surname ....................................................................... 4

2. BOVIS has recognized meaning other than as a surname ........................................ 6

3. BOVIS does not “look” or “feel” like a surname ..................................................... 8

4. Balancing the factors................................................................................................. 8

CONCLUSION......................................................................................................................... 9

Applicant’s Brief - Ex Parte Appeal: SN 77502609 ii

INDEX OF CITATIONS

Cases:

Fisher Radio Corp. v. Bird Electric Corp., 162 USPQ 265 (TTAB 1969) .............................. 9

In re BDH Two, Inc., 26 USPQ2d 1556 (TTAB 1993) ...................................................... 6-7,8

In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995)................................. 4,8,9

In re Curlin Medical, Inc.,Serial No. 78560314 (TTAB February 11, 2008) ......................... 5

In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed.Cir.1985) .................... 3

In re Hall Wines, LLC, Serial No. 78926151 (TTAB February 10, 2009) ......................... 3,5,9

In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238 (CCPA 1975)............................. 3

In re Hutchinson Technology, Inc., 852 F.2d 552, 7 USPQ2d 1490, (Fed. Cir. 1988) ............ 3

In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988)............................... 8

In re Joint-Stock Company “Baik”, 84 USPQ2d 1921 (TTAB 2007) ..................................... 4

In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (CCPA 1975) ........ 3

In re Sava Research Corp., 32 USPQ2d 1380 (TTAB 1994)................................................ 4-5

In re Sikorsky Aircraft Corp., Serial No. 78221800 (TTAB August 25, 2006)........................ 9

In re The Monotype Corp. Plc, 14 USPQ2d 1070 (TTAB 1989) ............................................. 7

Statutes:

Lanham Act Section 2(e)(4), 15 U.S.C. § 1052(e)(4)............................................................ 1,3

Lanham Act Section 2(f), 15 U.S.C. § 1052(f)......................................................................... 3

Applicant’s Brief - Ex Parte Appeal: SN 77502609 1

COMES NOW the Applicant, Nick Bovis, by Counsel, and hereby respectfully appeals

the Examining Attorney’s refusal to register the mark BOVIS FOODS in standard characters.

DESCRIPTION OF RECORD

A. PROSECTUION HISTORY

The BOVIS FOODS Application was initially refused on September 27, 2008 in anon-

final office action. Applicant filed a response to the office action on February 10, 2009. A Final

Refusal of Registration for the mark BOVIS FOODS was issued by the Examining Attorney on

March 4, 2009, based on (a) an identification issue and (b) the Examining Attorney’s conclusion

that the proposed mark was primarily merely a surname under Trademark Act Section 2(e)(4), 15

U.S.C. § 1052(e)(4). Applicant’s Notice of Appeal and Request for Reconsideration (“RFR”)

amending the recitation of services were timely filed on September 3, 2009. OnSeptember 24,

2009, the Examining Attorney accepted the amended recitation of services but denied the

Request for Reconsideration of the surname refusal.

B. EXAMINING ATTORNEY’S EVIDENCE

September 27, 2008, Office Action

The sole evidence attached to the Office Action consists of records from WhitePages.com

for “Bovis, United States” containing 197 results. However, only one web page of the results

was attached, so it is not clear how many results are duplicative. On the singlepage provided,

there are two Ali Bovis listings in Winter Park, Florida a well as two listings for Andrea Bovis.

March 4, 2009 Final Office Action

Surname report from a database.The records appear to contain 72 BOVIS listings from

across the United States. The database is not particularly identified in the exhibit or in the office


action, providing Applicant with no opportunity to conduct its own research from, or gather

details about, the database.

Ten records from a news database. The records appear to be from Lexis/Nexis as

described in the Final Office Action. The Examining Attorney has acknowledged that they are

“random examples”. See Final Office Action. More than half of these references appear to be

related to one company in the construction financing business using the name BOVIS or BOVIS

LEND LEASE. See for example record numbers 15, 16, 93, 96, 101, and 102. In fact, the

Examining Attorney’s Final Office Action acknowledges that these news articles do not show a

large variety of uses of BOVIS by others in footnote 2 which states “The majority of the Lexis

articles referred to “Bovis Lend Lease” an entity that uses the surname ina similar fashion to the

applicant.”

C. APPLICANT’S EVIDENCE

February 10, 2009, Response to Office Action

Exhibit 1: Definitions and explanations of the word BOVIS. Includes definitions of

“bovine” and other words based on the latin prefix “bovo-, bov-, bos-.” Includes explanationof

Latin declension from Wikipedia.

Exhibit 2: Evidence of the term bos bovis.

Exhibit 3: News articles about mycobacterium bovis. Includes articles from BBC News

World Edition, New York City Department of Heath and Mental Hygiene, and NewYork Times.

Exhibit 4: Evidence of calculus bovis.

Exhibit 5: Evidence of streptococcus bovis.Includes articles from theJournal of Clinical

Microbiology, The John Hopkins Microbiology Newsletter, and the journalRheumatology.


Exhibit 6: U.S. Census table.Table published by the U.S. Census Bureau1 showing the

1000 most common surnames found in the 2000 U.S. census. Bovis is not included among the

results in the table.

ARGUMENT

A. LEGAL STANDARD

The question of whether a mark sought to be registered is primarily merely a surname can

only be resolved on a case by case basis, and the quantum of evidence which was persuasive in

finding surname significance in one case may be insufficient in another because of differences in

the names themselves.See In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652

(Fed.Cir.1985). The test for determining whether a mark is primarily merelya surname is the

primary significance of the mark as a whole to the purchasing public.In re Hutchinson

Technology, Inc., 852 F.2d 552, 554, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988);In re Kahan &

Weisz Jewelry Mfg. Corp., 508 F.2d 831, 832, 184 USPQ 421, 422 (CCPA 1975);In re Harris-

Intertype Corp., 518 F.2d 629, 631, 186 USPQ 238, 239 (CCPA 1975).

Section 2(e)(4) of Trademark Act precludes registration of a mark which is “primarily

merely a surname” on the Principal Register without a showing of acquired distinctiveness under

Section 2(f) of the Act, 15 U.S.C. §1052(f).In re Hall Wines, LLC, Serial No. 78926151

(February 10, 2009) [not precedential]. The Board must decide on the facts of eachcase whether

the mark at issue is “primarily merely a surname” under the Act.See In re Etablissements Darty

et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985). The examining attorney bears the

initial burden to make a prima facie showing of surname significance.Id.

1 The Census Bureau makes the table available for download at http://www.census.gov/genealogy/www/names.zip


If there is any doubt regarding the applicability of a surname refusal, the Board is

“inclined to resolve such doubts in favor of applicant.”See In re Benthin Management GmbH, 37

USPQ2d 1332, 1334 (TTAB 1995).

Whether a mark is primarily merely a surname is determined by 4 factors:1) the degree

of the surname’s “rareness”; 2) whether anyone connected with the applicant has themark as a

surname; 3) whether the mark has any recognized meaning other than as a surname; and 4)

whether the mark has the “look and feel” of a surname.2 In re Benthin ManagementGmbH, 37

USPQ2d 1332 (TTAB 1995).

B. ANALYSIS

The mark at issue here is not primarily merely a surname. In this case, thesurname

BOVIS is an extremely rare surname in the United States. Moreover, the word BOVIS has

recognized meaning other than as a surname because it is a Latin term that describes medical

terms related to cows or oxen. Last, the surname does not look and feel like a traditional

surname particularly as it is used with the term FOODS.

1. BOVIS is an extremely rare surname.

The finding that a surname is rare strongly favors the conclusion that the mark is not

merely primarily a surname.See In re Joint-Stock Company “Baik”,84 USPQ2d 1921, 1923

(TTAB 2007) (finding that BAIK is an extremely rare surname, relyingon the fact that only 456

examples of the BAIK surname were located from a comprehensive directory of the entire

United States);In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994) (finding the

2 The fifth Benthinfactor, whether the manner in which the mark is displayed might negateany surnamesignificance, is not relevant here because Applicant seeks registration of BOVIS FOODS in standard character form.In re Gregory,70 USPQ2d 1792 (TTAB 2004).


surname SAVA was rare when there were over 100 incidences of the surname in a directory of

90,000,000 listings).

Furthermore, the Board has recently held that the rareness of a surname ismore

significant than the other factors.In re Hall Wines, LLC, Serial No. 78926151 (February 10,

2009) [not precedential]. InHall Winesthe Board determined that the BERGFELD name was

rare after the Examining Attorney submitting findings of approximately 300 records across the

US, including duplicates. While there is no “threshold” number for rareness of a surname, the

Board deemed it:

“important to accord the proper weight to the “rareness” of the surname factorwhile keeping in mind the purpose of Section 2(e)(4) of the Act. As explained byJudge Seeherman in her concurrence inIn re Joint-Stock Company “Baik”, 84USPQ2d 1921 at 1924 (TTAB 2007), the “purpose behind prohibiting theregistration of marks that are primarily merely surnames is not to protect thepublic from exposure to surnames,... Rather, the purpose behind Section 2(e)(4) isto keep surnames available for people who wish to use their own surnames intheir businesses...” Moreover, “in a case such as this involving a very raresurname, we cannot assume that the purchasing public will view the mark as asurname based on exposure to the surname use.”Id. (in main opinion) at 1923-4,citing In re Garan Inc., supraat 1540.” In re Hall Wines, LLC,Serial No.78926151 (February 10, 2009) [not precedential].

Similarly, in In re Curlin Medical, Inc.,the Board found the Examining Attorney’s

evidence fell short. Serial No. 78560314 (February 11, 2008) [not precedential]. In that case,

the Examining Attorney offered approximately 300 directory listings as well as 37 NEXIS

findings, which provided limited context and included some listings rather than full articles, but

did not provide any evidence that the public would be conditioned to recognize the mark asa

surname.Id.

Here, the Examining Attorney provided evidence of (1) 197 results for the surname

BOVIS from an internet telephone directory and (2) 72 listings for the surname BOVIS in an

unidentified national database.See September 27, 2008, Office Action. Given that there are over


100 million residential telephone listings in the United States, and that these directories are

nationwide, the presence of less than 300 households under the surname BOVIS means that it is

highly unlikely someone will meet a person with this surname. Moreover, the weight afforded to

this evidence should be limited because only a portion of the results has been provided. Each

directory may contain many duplicate listings, and the listings in one directory might also be

duplicates of the listings in the other. Therefore, the evidence presented by the Examining

Attorney fails to establish that BOVIS is not a rare surname in the United States.

Furthermore, Applicant has shown that BOVIS does not appear among the 1000 most

common surnames in the U.S., as determined by the U.S. Census Bureau during the 2000 U.S.

census.See Exhibit 6 of February 10, 2009, Response to Office Action.Cooke is the least

common name appearing on the table, and the Census Bureau found that 31,860 people, or 11.81

per 100,000 Americans, have that surname.Id. At most, the Examining Attorney has offered

evidence that BOVIS is the surname of a few hundred Americans, nowhere near the tens of

thousands necessary to approach the top 1000 surnames. This finding strongly implies that

BOVIS is an extremely rare surname in the United States.

The absence of the surname BOVIS in U.S. Census data and the miniscule number of

occurrences of the surname BOVIS in a comprehensive directory of the United States

demonstrates that BOVIS is an extremely rare surname, and that the Examining Attorney has

failed to meet its burden to show otherwise. Consequently, this factor strongly favors Applicant.

2. BOVIS has a recognized meaning other than as a surname.

A mark that has a recognized meaning other than as a surname is less likely to be

considered primarily merely a surname.In re BDH Two, Inc., 26 USPQ2d 1556 (TTAB 1993)

(GRAINGERS for crackers and chips made from cereal grains would not be perceived as a


surname, but consumers “probably will view the mark as suggestive of the grain-based nature of

the products.”);In re the Monotype Corp. Plc, 14 USPQ2d 1070 (TTAB 1989) (finding that the

word CALLISTO has significant nonsurname meaning from Greek mythology).

Here, the term BOVIS is the singular genitive form of the Latin root BOV-, which means

“ox, cow.” See Exhibit 1 of February 10, 2009, Response to Office Action.As a genitive term,

BOVIS is used as to indicate that something relates to something else. Cows themselves can be

referred to asbos bovi. See Exhibit 2 of February 10, 2009, Response to Office Action.The

word BOVIS is an adjective used in medical language to indicate that something is related to

cows or oxen. For instance, the bacteriumMycobacterium bovis, or M. bovis, is a causative

agent of tuberculosis in cows and humans.See Exhibit 3 of February 10, 2009, Response to

Office Action.This bacterium has been the subject of several newspaper articles and public

health initiatives in recent times as scientists struggle to control itsspread.Id. Calculus Bovis,

which are cow and ox gallstones, are used in traditional folk medicine, and are sold in traditional

medicine stores and websites.See Exhibit 4 of February 10, 2009, Response to Office Action.

Streptococcus bovisis a bacterium found in the intestinal tract of cows, sheep and other

ruminants.See Exhibit 5 of February 10, 2009, Response to Office Action.This bacterium is a

known human pathogen that may cause endocarditis and meningitis.Id.

These examples and the linguistic structure indicate that the word BOVIS is used as a

genitive term and means “related to cows or oxen.” In addition, the term BOVISevokes the well

known term BOVINE which also has a relevant meaning, namely, “Of, relating to, or resembling

a ruminant mammal of the genusBos,such as an ox, cow, or buffalo.”See Exhibit 1 of February

10, 2009, Response to Office Action.


As in In re BDH Two,consumers are likely to view BOVIS FOODS as suggestive of the

nature of Applicant’s food distribution services. Consequently, the word BOVIS has a meaning

independent from that of a surname, and this factor also weighs strongly against a finding that

the BOVIS FOODS mark is primarily merely a surname.

3. BOVIS does not “look” or “feel” like a surname.

The “look and feel” of a surname is based on its “structure and pronunciation” or “look or

sound.” In re Benthin Management Gmbh, 37 U.S.P.Q.2d 1332, (BENTHIN “does not have the

clear look and sound of a surname like Pirelli does, nor does it have the clear look and sound of

an arbitrary term like Kodak does.”). Here, there is no evidence that BOVIS has structure and

pronunciation of common surnames, or no evidence of any similar words which are well

recognized surnames.See In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566

(TTAB 1988).

BOVIS does not look or feel like a surname because it is also a Latin word meaning

“related to cows,” and sounds like a word related to cows or oxen. Since the goods and services

associated with Applicant’s mark pertain to food products and wholesale distribution of food

products, the primary significance of the mark to the purchasing public is as a term that evokes

cows as relates to food and eating. As a result, this element also weighs inthe Applicant’s favor.

4. Balancing the factors

The balance of the factors strongly favors a finding that Applicant’s BOVIS FOODS

mark is not primarily merely a surname because. BOVIS is an extremely rare surname, BOVIS

has a recognized meaning related to cattle and oxen, and BOVIS does not look orfeel like a

surname. The only factor that weighs in favor of the Examining Attorney’s refusal is the fact

that Applicant’s own surname is Bovis. However, there is noper serule that all marks that


include the name of someone connected with the applicant are primarily merely surnames. See,

e.g., Fisher Radio Corp. v. Bird Electric Corp., 162 USPQ 265 (TTAB 1969) (finding BIRD

with a picture of a bird not primarily a surname even though it was the surname of the president

of the applicant);In re Sikorsky Aircraft Corp., Serial No. 78221800 (August 25, 2006)

(reversing refusal of SIKORSKY even though it was the surname of Applicant’s founder).

Considered all the factors together, Applicant’s surname is merely a single factor that is clearly

outweigh when balanced against the other three factors, especially when sufficient weight is

given to the extreme rareness of Bovis as a surname.In re Hall Wines, LLC, Serial No.

78926151 (“In balancing the aforementioned factors, we make no secret that …rarenessof the

surname has been given much more weight than the other three factors”).

CONCLUSION

The relevant factors strongly favor a finding that Applicant’s BOVIS FOODS mark is not

primarily merely a surname because: (1) BOVIS has a recognized meaningthat is likely to

suggest to the purchasing public a relationship with cattle and oxen which corresponds to

Applicant’s food distribution services; (2) the word BOVIS “looks and feels” like a term related

to cattle and oxen, and not a surname; and (3) the use of BOVIS as a surname is extremely rare

and the evidence of surname usage is minimal.

The Examining Attorney has failed to meet his burden to demonstrate the Applicant’s

BOVIS FOODS mark is primarily merely a surname. To the extent there exists any doubt in the

surname refusal assessment after weighing relevant factors, the Board resolves any such doubt in

favor of applicant.In re Benthin Management GmbH, 37 USPQ2d at 1334.

In light of the above, Applicant respectfully requests that the Board grant this ExParte

Appeal and allow for the registration of the BOVIS FOODS mark.


Dated this 3rd day of December, 2009.

Erik M. PeltonERIK M. PELTON & A SSOCIATES, PLLCPO Box 100637Arlington, Virginia 22210TEL: (703) 525-8009FAX: (703) 525-8089Attorney for Applicant

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