UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/366319
APPLICANT: RSI Holding Corporation
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CORRESPONDENT ADDRESS: FRANCIE R. GOROWITZ O'MELVENY & MYERS LLP 1999 AVENUE OF THE STARS, 7 TH FLOOR LOS ANGELES, CALIFORNIA 90067-6035
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom103@uspto.gov
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MARK: AMERICAN CLASSICS
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CORRESPONDENT’S REFERENCE/DOCKET NO: 689,932-23
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/366319
This letter responds to the applicant's communication filed on November 22nd, 2002. The amended identification of goods is acceptable and is made of record. The substitute drawing page is acceptable and is made of record. The potential 2(d) cite, which has abandoned, is withdrawn. The verified statement of use as of the application filing date is acceptable and is made of record. The applicant argues against the refusal to register under Section 2(e)(1). The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL.
Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), because the subject matter for which registration is sought is merely descriptive of the identified goods/services.
The applicant has applied to register AMERICAN CLASSICS for among other items, bathroom cabinets. If “AMERICA” or “AMERICAN” is used in a way that primarily denotes the United States origin of the goods or services, then the term is primarily geographically descriptive. See, e.g., American Diabetes Association, Inc. v. National Diabetes Association, 533 F. Supp. 16, 214 USPQ 231 (E.D. Pa. 1981), aff’d, 681 F.2d 804 (3d Cir. 1982) (AMERICAN DIABETES ASSOCIATION held primarily geographically descriptive); In re Monograms America, Inc., 51 USPQ2d 1317 (TTAB 1999) (MONOGRAMS AMERICA primarily geographically descriptive of consultation services for owners of monogramming shops); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986) (BANK OF AMERICA held primarily geographically descriptive); American Paper & Plastic Products, Inc. v. American Automatic Vending Corp., 152 USPQ 117 (TTAB 1966) (AMERICAN AUTOMATIC VENDING held primarily geographically descriptive). Trademark Manual of Examining Procedure §1210.02(c) (3rd edition January 2002). The applicant is an American company. Its goods are American.
The applicant argues against “classic” having specific meaning with respect to its goods. The applicant’s goods are of classic design and are from America. The applicant’s goods are American classics.
The examining attorney attaches two printouts from the Trademark X-Search database where (1) the term “classics” has been disclaimed and (2) the entire mark is registered on the Supplemental, suggesting the descriptive nature of the applicant’s mark in connection with the applicant’s goods, e.g. cabinets. See attached.
The examining attorney refers to the excerpted articles from the examining attorney’s search in a computerized data base in which “classics” appeared in close connection to “cabinets” in multiple stories. See attachments.
For example, note the following:
Story No. 1: Inside, the homes have high ceilings; built-in cabinetry in classic, contemporary lines; …
Story No. 4: Six classic styles of cabinets are built to size by Amish craftsman in western Wis. …
Story No. 17: … interior laundry room with classic cabinets and Kohler laundry sink …
The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984).
Finally, the examining attorney attaches a printout from the applicant’s website where it identifies itself as a “quality cabinetry” retailer. The term “classic” is synonymous with “quality” in the furniture and/or cabinetry field.
The refusal to register under Section 2(e)(1) is continued and made FINAL.
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. §2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. §2.65(a).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Gina M. Fink/
Trademark Attorney - Law Office 103
Phone: (703) 308-9103 ext. 232
Law Office 103 Fax: (703) 746-8103
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.