Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1130634
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`Filing date:
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`04/30/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`88378998
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`ISSA, LLC
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`Applied for Mark
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`ISSA INTERNATIONAL SPORTS SCIENCES ASSOCIATION
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`Correspondence
`Address
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`MARK A. WATKINS
`VORYS, SATER, SEYMOUR AND PEASE LLP
`P.O. BOX 2255
`IPLAW@VORYS.COM
`COLUMBUS, OH 43216-2255
`UNITED STATES
`Primary Email: iplaw@vorys.com
`Secondary Email(s): bjjustice@vorys.com
`330-208-1000
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`Submission
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`Attachments
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Request for remand/amendment
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`MotionToRemandISSA.4.30.2021.pdf(107083 bytes )
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`William Ryan
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`weryan@vorys.com, iplaw@vorys.com
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`/William E. Ryan/
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`04/30/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Application Serial No.:
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`88378998
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`For the Mark
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`Filing Date:
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`Applicant:
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`Examining Attorney:
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`April 10, 2019
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`ISSA, LLC
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`Bridgett G. Smith
`Law Office 115
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`ATTN: TTAB
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`APPLICANT’S MOTION AND REQUEST TO REMAND
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`Pursuant to TBMP Section 1209.04, Applicant, ISSA, LLC (“Applicant”) by and
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`though its undersigned attorney, respectfully requests that the Board suspend the
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`appeal regarding Trademark Application Serial No. 88378998 and remand jurisdiction
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`of the application to the U.S. Patent and Trademark Office Examining Attorney for
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`consideration of an amendment to the application to add a disclaimer. Addition of
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`the disclaimer would narrow the scope of appeal and/or render the appeal moot. In
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`support of this Request to Remand, Applicant states as follows:
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`1.
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`On June 29, 2019 U.S. Trademark Examining Attorney Bridgett Smith
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`issued a First Office Action, refusing registration based on the following:
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`a. Required a new drawing (of higher quality)
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`b. Required a Color Claim and amendment to the description of the
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`mark
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`c. Required a Disclaimer.
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`2.
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`On December 30, 2019 Applicant filed Response to the Office Action
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`addressing the color claim and description of the mark. Applicant also submitted a
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`new drawing and presented argument for an alternate disclaimer.
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`3.
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`On January 28, 2020 the Examiner issued a Priority Action maintaining
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`the disclaimer requirement of “INTERNATIONAL SPORTS SCIENCES ASSOCIATION.”
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`4.
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`On June 25, 2020 Applicant filed a response to the Priority Action with
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`arguments directed to the Disclaimer requirement. Applicant noted that it would
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`consider the possibility of an alternate disclaimer for a subset of the terms.
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`5.
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`On July 20, 2020, the Examining Attorney issued a Final Office Action
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`maintaining the disclaimer requirement of “INTERNATIONAL SPORTS SCIENCES
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`ASSOCIATION.”
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`6.
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`On January 19, 2021, Applicant filed Notice of Appeal and timely filed
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`its Appeal Brief on March 8, 2021. Again, in Applicant’s Appeal Brief, Applicant invited
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`the Examining Attorney to consider an alternate disclaimer.
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`7.
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`On or about April 27, 2021 the Trademark Examining Attorney (Bridgett
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`Smith) contacted the Attorney of Record, Mark Watkins regarding the pending appeal
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`and the issue which is the subject of the appeal. The Examining Attorney agreed
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`that remand was appropriate to allow for further consideration as to the nature and
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`scope of the requested disclaimers and/or a claim filed under Section 2(f). Based on
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`these conversations, counsel for Applicant and the Examining Attorney believe that
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`the outstanding issues can be resolved, or at least narrowed.
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`8.
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`Applicant respectfully requests that jurisdiction for the Application be
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`returned to the Examining Attorney to: (1) allow the Examining Attorney to further
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`consider the nature and scope of the requested disclaimer; (2) provide the Applicant
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`the opportunity, if necessary, to enter evidence as to use of the mark in commerce,
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`and/or, (3) allow the Examining Attorney to consider a claim under Section 2(f)
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`directed to the word portion of the mark for at least some classes of goods/services
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`in the Application.
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`9.
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`Good cause exists for granting this Request for Remand because the
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`Examining Attorney is willing is discuss the disclaimer request and/or resolve
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`outstanding issues for at least some classes in the Application. Such action will likely
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`obviate the remaining refusals and narrow or render moot the issues currently on
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`appeal.
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`WHEREFORE, Applicant requests that the Board grant Applicant’s Request for
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`Remand, remand the Application to the Examining Attorney, and suspend this appeal
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`proceeding while the Application is in the Examining Attorney’s jurisdiction.
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`Applicant believes that no additional fees are due with the filing of this Motion
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`and Request. However, the Board is authorized to debit the Deposit Account of Vorys,
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`Sater, Seymour & Pease LLP, Deposit Account No. 220585, in the event the Board
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`deems any fees are due.
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`Respectfully submitted,
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`Vorys, Sater, Seymour and Pease LLP
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`Dated: April 30, 2021
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`/William E. Ryan/
`William E. Ryan
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`Mark A. Watkins
`106 S. Main Street #1100
`Akron, Ohio 44308
`Phone: (330) 208-1000
`Fax: (330) 208-1001
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`E-mail: weryan@vorys.com
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` mawatkins@vorys.com
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`Attorneys for Applicant
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