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  76/467880

 

The assigned examining attorney has reviewed the referenced application and determined the following.  The examining 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. §1052(e)(3); TMEP §1210.01(b). 

 

The applicant’s mark is PATAGONIA PROVISIONS for snack foods, trail mix, natural foods, nutritional foods and drinks, and desserts. Here, the primary significance of the term PATAGONIA is geographic.  In this case, the term merely identifies a region in Argentina.  Please see the dictionary definition below.  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 Patagonia.  In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985).  TMEP §1210.01(b). 

 

Pat·a·go·ni·a

 
Pat·a·go·ni·a (pàt´e-go¹nê-e, -gon¹ye)

A tableland region of South America in southern Argentina and Chile extending from the Río Colorado to the Straits of Magellan and from the Andes to the Atlantic Ocean. The study of its original inhabitants, the Tehuelche (“the Patagonian giants”), and its unusual wildlife have attracted many scientific expeditions, including that of Charles Darwin (1831-1836).

— Pat´a·go¹ni·an adjective & noun[1]

 

The applicant must explain where the goods originate for the record.  37 C.F.R. §2.61(b).  TMEP §1210.03. 

 

Please note that the examining attorney need only make a prima facie showing that a public association exists between the applicant’s goods and Patagonia.  The examining attorney need not show the fame of the place, but rather the likelihood that the particular place will be associated with the particular goods.  In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985).  TMEP §§1210.04(a), 1210.04(b) and 1210.04(c).  Here, the association has been since the Argentinean economy is agriculture based.  Please see the dictionary definition below.

 

Ar·gen·ti·na

 
Ar·gen·ti·na (är´jen-tê¹ne)

Abbr. Arg.

A country of southeast South America stretching about 3,701 km (2,300 mi) from its border with Bolivia to southern Tierra del Fuego, an island it shares with Chile. Argentina is one of the most highly developed Latin American countries, with an economy based both on agriculture and on diversified industry. It proclaimed its independence from Spain in 1816. Buenos Aires is the capital and the largest city. Population, 27,947,446.

— Ar¹gen·tine´ (-tên´, -tìn´) or  Ar´gen·tin¹e·an (-tîn¹ê-en) adjective & noun[2]

 

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

 

INFORMALITIES

 

Classification of Goods

 

The applicant has classified some of the goods incorrectly.  The applicant must amend the application to classify the goods in the appropriate International Class.  37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP sections 805 and 1401.

 

Identification of Goods

 

The wording in the identification of goods is overly broad and indefinite because it could include services classified in other classes and fails to provide sufficient specificity as to the nature of the applicant’s services.  In the identification, the applicant should 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 sections 804 and 804.08(c).

 

The applicant may adopt the following recitation of services, if accurate: 

 

Class 29

Snack foods, namely, fruit-based snack food, potato-based snack food, and candied fruit snacks; trail mix consisting primarily of processed fruit, nuts and seeds; nutritional foods, namely, [the applicant must specify the common commercial name];

 

Class 30

Snack foods, namely, granola-based snack bars,  puffed corn snacks and rice-based snack bars; trail mix snack food comprising pasta, pretzels and nuts; nutritional foods, namely, [the applicant must specify the common commercial name]; drinks, namely, coffee and tea; bakery desserts; and

 

Class 32

Drinks, namely, fruit-flavored drinks, soft drinks and sports drink.

 

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. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Multi-class Application

 

If the applicant adopts the suggested amendment to the identification of goods, the applicant must amend the classification to International Classes 29, 30 and 32.  37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP sections 805 and 1401.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Disclaimer

 

The applicant must disclaim the descriptive wording “PROVISIONS” 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 because it describes a feature of the goods, i.e., A stock of necessary supplies, especially food.[3]

 

A properly worded disclaimer should read as follows:

 

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

 

CONCLUSION

 

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

 

 

/Ingrid C. Eulin/

Ingrid C. Eulin

Trademark Examining Attorney

Law Office 111

(703) 308-9111 ext 424

(703) 308-7191 by fax

(703) 746-8111 b

 

 

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.