Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/393056

 

This letter responds to the applicant’s communication dated February 13, 2003.  The examiner accepts and acknowledges the applicant’s statement that the mark has never been used as a varietal name and that the identified goods do not come from Krymsk, Russia.   

 

Registration was refused under Trademark Act Section 2(e)(3), 15 U.S.C. Section 1052(e)(3), because the mark for which registration is sought is primarily geographically deceptively misdescriptive.

 

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)(3) is maintained and made FINAL.

 

The primary significance of the term "KRYMSK" is geographic.  See again evidence from Merriam Webster's Geographical Dictionary, from the world wide web and from the Dialog database indicating the geographic significance of KRYMSK, a town with a population of over 50,000 in Russia. The applicant's goods do not come from this place.  The mark is geographically deceptively misdescriptive because the public would believe that the goods do come from Krymsk, Russia.  In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985).  See again the evidence from the world wide web and from the dialog database already of record indicating that cherries as well as cherry rootstock originate from Krymsk.  For example, see the excerpt of record showing that a Washington State convention on horticulture features a speaker from a Krymsk Breeding Station on the topic of “exciting peach and cherry rootstocks from the Russian Breeding Program”.  See also the excerpt referring to a grant received by the USDA in 1998 for an expedition to Russia for the exchange of sour cherry and cherry rootstock for crop improvement.  Therefore, it appears from the evidence of record that the relevant horticultural consumer is familiar with cherry rootstock originating from Krymsk.  Furthermore, the evidence of record clearly indicates that Krymsk, Russia is not small in size, but is at least 50,000 in population.  See excerpt from Merriam Webster’s Geographical Dictionary of record.   Nevertheless, the applicant has argued that while a Russian city with a population of 50,000 may be generally known to the public in Russia, only a much larger city would be generally known to the American public.   See Applicant’s Response dated Feb. 13, 2003 at pages 2-3, paragraphs 3-1.  However, as can be seen from the evidence already of record, the relevant horticultural consumer is familiar with Krymsk and the association with cherry rootstock.  Moreover, the relevant Russian-American would likely be familiar with a city the size of Krymsk.   The applicant’s attention is now drawn to further evidence from the world wide in support of the stated refusal that the proposed mark is deceptively geographically misdescriptive.  For example, see the excerpt attached specifically referring to a Krymsk canning plant which cans cherries.  This evidence clearly shows an association between Krymsk and cherries.  See also the excerpt referring to the Krymsk experiment breeding station.  See also the attached excerpt from The San Francisco Examiner from the LEXIS/NEXIS database attached stating that “(t)he big news here are Russian fruits..(r) ecent émigrés and the botanically curious can enjoy the taste of the pear-like shipova or edible mountain ash, as well as the black apricot brought back from Krymsk personally by local fruit maven Andy Mariani..”  It appears, therefore, that Russian fruits are becoming quite popular in the United States.  In that the applicant’s cherry trees are not from Krymsk, Russia, and in that there is an association between Krymsk, Russia and fruits, including cherries, the mark is deceptively misdescriptive.

 

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).

 

 

 

/Zhaleh Sybil Delaney/

Trademark Attorney

Law Office 116

(703) 306-7908

ecom116@USPTO.gov

 

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

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SEND TO: DELANEY, ZHALEH              

         TRADEMARK LAW LIBRARY                  

         2101 CRYSTAL PLAZA ARC                 

         MAILBOX 314                            

         ARLINGTON, VIRGINIA 22202-4600
MAIL-IT REQUESTED: MARCH 24, 2003                           10083K

 

        CLIENT:

       LIBRARY: NEWS

          FILE: ALLNWS

 

YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:

 KRYMSK W/25 FRUIT!

 

NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:

      LEVEL   1...       1

 

LEVEL    1 PRINTED

 

DISPLAY FORMAT: KWIC

 

MULTIPLE DOCUMENTS ON A PAGE

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

SEND TO: DELANEY, ZHALEH

         TRADEMARK LAW LIBRARY

         2101 CRYSTAL PLAZA ARC

         MAILBOX 314

         ARLINGTON VIRGINIA 22202-4600

 

 

 

**********************************04228**********************************

Copyright 1995 The Hearst Corporation  

The San Francisco Examiner

 

January 11, 1995, Wednesday; Fourth Edition

 

SECTION: EPICURE; Pg. Z-2 

 

LENGTH: 827 words 

 

HEADLINE: Sub-tropical, exotic plants latest trend in gardening 

 

BYLINE: MIA AMATO 

 

BODY:

 

   ... Gardening Co. 

 

    It's not too late to order bare-root fruit trees by mail. The big news here are Russian fruits. Recent emigres and the botanically curious can enjoy the taste of the pear-like shipova or edible mountain ash, as well as the black apricot brought back from Krymsk personally by local fruit maven Andy Mariani. It is a dark purple, fuzzed fruit, self-fertile, its flesh swirled yellow and red. This beauty is sold through the Raintree Nursery catalog.