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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

gov ESTTA Tracking number: Filing date:

ESTTA320003 12/03/2009

Proceeding Applicant Applied for Mark Correspondence Address

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 77502609 Bovis, Nick BOVIS FOODS ERIK M. PELTON ERIK M. PELTON & ASSOCIATES, PLLC PO BOX 100637 ARLINGTON, VA 22210-3637 UNITED STATES emp@tm4smallbiz.com Appeal Brief BOVIS FOODS - Ex Parte Appeal FINAL.pdf ( 13 pages )(42718 bytes ) Erik M. Pelton uspto@tm4smallbiz.com /ErikMPelton/ 12/03/2009

Submission Attachments Filer's Name Filer's e-mail Signature Date

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Serial No. Mark: Applicant: Examining Attorney:

77502609 BOVIS FOODS Nick Bovis Jason F. Turner Law Office 108

EX PARTE APPEAL APPLICANTS BRIEF

TABLE OF CONTENTS

INDEX OF CITATIONS.......................................................................................................... ii DESCRIPTION OF RECORD ................................................................................................. 1 A. Prosecution History........................................................................................................ 1 B. Examining Attorneys Evidence .................................................................................... 1 C. Applicants 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

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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

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ii

COMES NOW the Applicant, Nick Bovis, by Counsel, and hereby respectfully appeals the Examining Attorneys 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 a nonfinal 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 Attorneys conclusion that the proposed mark was primarily merely a surname under Trademark Act Section 2(e)(4), 15 U.S.C. 1052(e)(4). Applicants Notice of Appeal and Request for Reconsideration (RFR) amending the recitation of services were timely filed on September 3, 2009. On September 24, 2009, the Examining Attorney accepted the amended recitation of services but denied the Request for Reconsideration of the surname refusal.

B. EXAMINING ATTORNEYS 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 single page 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

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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 Attorneys 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 in a similar fashion to the applicant.

C. APPLICANTS 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 explanation of 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 New York Times. Exhibit 4: Evidence of calculus bovis. Exhibit 5: Evidence of streptococcus bovis. Includes articles from the Journal of Clinical Microbiology, The John Hopkins Microbiology Newsletter, and the journal Rheumatology.

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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 merely a 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 HarrisIntertype 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 each case 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.

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

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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 surnames rareness; 2) whether anyone connected with the applicant has the mark 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 Management GmbH, 37 USPQ2d 1332 (TTAB 1995).

B. ANALYSIS The mark at issue here is not primarily merely a surname. In this case, the surname 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, relying on 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

The fifth Benthin factor, whether the manner in which the mark is displayed might negate any surname significance, is not relevant here because Applicant seeks registration of BOVIS FOODS in standard character form. In re Gregory, 70 USPQ2d 1792 (TTAB 2004).

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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 is more significant than the other factors. In re Hall Wines, LLC, Serial No. 78926151 (February 10, 2009) [not precedential]. In Hall Wines the 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 factor while keeping in mind the purpose of Section 2(e)(4) of the Act. As explained by Judge Seeherman in her concurrence in In re Joint-Stock Company Baik, 84 USPQ2d 1921 at 1924 (TTAB 2007), the purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames,... Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses... Moreover, in a case such as this involving a very rare surname, we cannot assume that the purchasing public will view the mark as a surname based on exposure to the surname use. Id. (in main opinion) at 1923-4, citing In re Garan Inc., supra at 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 Attorneys 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 as a 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

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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

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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 as bos 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 bacterium Mycobacterium 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 its spread. 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 bovis is 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 BOVIS evokes the well known term BOVINE which also has a relevant meaning, namely, Of, relating to, or resembling a ruminant mammal of the genus Bos, such as an ox, cow, or buffalo. See Exhibit 1 of February 10, 2009, Response to Office Action.

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As in In re BDH Two, consumers are likely to view BOVIS FOODS as suggestive of the nature of Applicants 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 Applicants 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 in the Applicants favor. 4. Balancing the factors The balance of the factors strongly favors a finding that Applicants 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 or feel like a surname. The only factor that weighs in favor of the Examining Attorneys refusal is the fact that Applicants own surname is Bovis. However, there is no per se rule that all marks that

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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 Applicants founder). Considered all the factors together, Applicants 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 rareness of the surname has been given much more weight than the other three factors).

CONCLUSION The relevant factors strongly favor a finding that Applicants BOVIS FOODS mark is not primarily merely a surname because: (1) BOVIS has a recognized meaning that is likely to suggest to the purchasing public a relationship with cattle and oxen which corresponds to Applicants 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 Applicants 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 Ex Parte Appeal and allow for the registration of the BOVIS FOODS mark.

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Dated this 3rd day of December, 2009.

Erik M. Pelton ERIK M. PELTON & ASSOCIATES, PLLC PO Box 100637 Arlington, Virginia 22210 TEL: (703) 525-8009 FAX: (703) 525-8089 Attorney for Applicant

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