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  76/453241

 

            The assigned examining attorney has reviewed the referenced application and determined the following.

 

SEARCH OF THE OFFICE RECORDS

 

            The trademark attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 1105.01.

 

REGISTRATION REFUSED – GEOGRAPHICALLY MISDESCRIPTIVE

 

            The examining attorney refuses registration on the Principal Register because the mark is primarily geographically deceptively misdescriptive.  Trademark Act Section 2(e)(3), 15 U.S.C. Section 1052(e)(3); TMEP section 1210.06.

 

               The applicant has applied to register the mark ZURICH AGRICULTURAL COMMODITIES for various kinds of financial services that involve AGRICULTURAL COMMODITIES. The wording AGRICULTURAL COMMODITIES is merely descriptive of the field of the applicant’s service product. Please note that the addition of a generic or highly descriptive term to a geographic term does not obviate a determination of geographic descriptiveness.  TMEP §1210.07(a).  See In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988); In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986).  Accordingly, the primary significance of the term ZURICH is geographic. See attached Exhibit.

 

             The mark is geographically deceptively misdescriptive because the public is likely to believe that the services offered by the applicant originate from ZURICH. In re Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985). Therefore, the mark is refused registration on the Principal Register under Section 2(e)(3)

 

If the primary significance of a mark is to indicate a geographic location which is neither obscure nor remote and the applicant's services will be performed, at least in part, in the location indicated, then the public is likely to believe that the geographic term identifies the place from which the services will originate.  In re Chalk's International Airlines, Inc., 21 USPQ2d 1637 (TTAB 1991).  The applicant must indicate specifically whether the services will be from or will have any other connection with the City of ZURICH. 37 C.F.R. Section 2.61(b).

 

RIGHT TO RESPOND

 

            Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

REGISTRATION REFUSED – AS ALTERNATIVE – GEOGRAPHICALLY DESCRIPTIVE

 

            In the event that the event that the services will be from or will have any other connection with the city of ZURICH, the examining attorney refuses registration on the Principal Register because the mark is primarily geographically descriptive of the applicant's services.  Trademark Act Section 2(e)(2), 15 U.S.C. Section 1052(e)(2); TMEP section 1210.05.

 

             The applicant has applied to register the mark ZURICH AGRICULTURAL COMMODITIES for various kinds of financial services that involve AGRICULTURAL COMMODITIES. The wording AGRICULTURAL COMMODITIES is merely descriptive of the field of the applicant’s service product. Please note that the addition of a generic or highly descriptive term to a geographic term does not obviate a determination of geographic descriptiveness.  TMEP §1210.07(a).  See In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988); In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986).  Accordingly, the primary significance of the term ZURICH is geographic. See attached Exhibit.

 

             Accordingly, the primary significance of ZURICH in the applicant’s mark is geographic, and applicant's services will come from the geographical place named in the mark.  Therefore, a public association of the services with the place is presumed.  In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).

 

            Inasmuch as the mark immediately names the field of the services and the place from which the services will be from, the mark is refused registration on the Principal Register under Section 2(e)(2)

 

RIGHT TO RESPOND

 

            Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

INFORMALITIES

 

              If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

INFORMATION REQUEST – SERVICES

 

          The nature of the service is not clear from the present record.  In order to allow proper identification and classification of the services on which the applicant intends to use the mark, the applicant must submit samples of advertisements or promotional materials for services of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the services with which the applicant has asserted a bona fide intent to use the mark.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

              Trademark Rule 2.61(b) states "The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application".  The Trademark Trial and Appeal Board has upheld a refusal of registration based on the applicant's failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990)(failure to submit patent information regarding configuration). 

 

RECITATION OF SERVICES

 

             The wording “providing for others OVER-THE-COUNTER AGRICULTURAL PRICE RISK MANAGEMENT PRODUCTS AND SERVICES” in the recitation of services is unacceptable as indefinite. The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature.  TMEP §1402.11.

 

              The wording “ADVICE RALTING TO AGRICULTURAL RISK MANAGEMENT” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “consultation services in the field of agricultural risk management,” if accurate.  TMEP §1402.11.

 

              In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).

 

             Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

             For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

PRIOR REGISTRATIONS

 

               If the applicant is the owner of Registration Nos. 1372968, 1271041, 1213689, 1937947, 23422901643870 and others, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

DISCLAIMER

 

             The applicant must disclaim the descriptive wording “AGRICULTURAL COMMODITIES” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive of the field of the applicant’s services.

 

            The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use AGRICULTURAL COMODITIES apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

CLOSING

 

              If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/WILLIAM H. DAWE III/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 294

(703) 746-8108 (Fax)

ecom108@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.

 

Zu·rich

 
Zu·rich (z¢r¹îk)

A city of northeast Switzerland at the northern tip of the Lake of Zurich. Founded before Roman times, Zurich became a free imperial city after 1218 and joined the Swiss Confederation in 1351. In the 16th century it was a center of the Swiss Reformation under the leadership of Ulrich Zwingli. Today it is the largest city in the country. Population, 354,500.[1]