UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/512202
APPLICANT: Richemont International SA
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CORRESPONDENT ADDRESS: HELEN M. O'SHAUGHNESSY 2 EAST 52ND STREET NEW YORK, NEW YORK 10022
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom110@uspto.gov
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MARK: TOLEDO
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
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 76/512202
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.
The examining attorney refuses registration because the mark consists of or comprises deceptive matter in that the mark suggests that the goods come from Toledo, Spain and applicant’s address is located in Villars-du-Mer, CHX. Trademark Act Section 2(a), 15 U.S.C. Section 1052(a). See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986); TMEP section 1203.02.
The primary significance of the term "TOLEDEO" is geographic.
To·le·do1
To·le·do (te-lê¹do)
1. (also tô-lè¹thô). A city of central Spain near the Tagus River south-southwest of Madrid. It fell to the Romans in 193 B.C. and was later the capital of the Visigoth kingdom (534-712). As a Moorish capital (712-1031) it was a center of Arab and Hebrew learning. Population, 57,778.[1] See attached webpage from www.eopinions.com indicating the Toledo, Spain is known for Damascene jewelry. And http://www.users.cloud9.net/~bradmcc/240/ that discusses damascene watch movements. And Lexis article from the New York times indicating Toledo, Spain know for jewelry.
Toledo is a well known manufacture of jewelry, watches and clocks with Damascene designs.
Consequently, the proposed mark when used in connection with “watches, chromometers, and clocks” would cause consumers to believe that the goods where made in Toledo, Spain. Furthermore, this belief would materially influence consumers to purchase the goods. In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984. The public is likely to believe that the goods come from this place). See TMEP sections 1210.04 and 1210.07. Because the place named in the mark is known for such goods.
Therefore, the proposed mark when used in connection with goods would deceive consumers and thus, the mark is refused registration Trademark Act Section 2(a), 15 U.S.C. Section 1052(a).
In the alternative, the examining attorney refuses registration on the Principal Register because the mark is primarily geographically descriptive of the applicant's goods. Trademark Act Section 2(e)(2), 15 U.S.C. Section 1052(e)(2); TMEP section 1210.05.
The applicant applied to register the mark TOLEDO in typed form for watches, chronometers, and clocks, in Class 14.
The primary significance of the term “TOLEDO” is geographic. The applicant’s goods do not appear come from this place. The mark is geographically deceptively misdescriptive because the public would believe that the goods/services do come from TOLEDO, Spain. In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985). TMEP §1210.01(b).
To·le·do1
To·le·do (te-lê¹do)
1. (also tô-lè¹thô). A city of central Spain near the Tagus River south-southwest of Madrid. It fell to the Romans in 193 B.C. and was later the capital of the Visigoth kingdom (534-712). As a Moorish capital (712-1031) it was a center of Arab and Hebrew learning. Population, 57,778.[2] See attached webpage from www.eopinions.com indicating the Toledo, Spain is known for Damascene jewelry. And http://www.users.cloud9.net/~bradmcc/240/ that discusses damascene watch movements. See also Lexis articles referring to watches and clocks made in Toledo, Spain.
If the primary significance of a mark is to indicate a geographic location which is neither obscure nor remote and the applicant’s goods are manufactured or produced in the location indicated, then the public is likely to believe that the geographic term identifies the place from which the goods originate. See In re Nantucket Allserve, Inc., 28 USPQ2d 1144 (TTAB 1993). The applicant must indicate specifically whether the goods are manufactured or produced in, or have any other connection with, the geographic location named in the mark. 37 C.F.R. §2.61(b); TMEP §1210.03.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following:
The applicant must submit the following statement:
The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.
Trademark Act Section 44, 15 U.S.C. §1126. This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20. Trademark Act Section 44, 15 U.S.C. §§1126; 37 C.F.R. §§2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §1008.
Applicant has only stated a bona fide intent under Section 1(b).
If the applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), the applicant must submit a true copy, a photocopy, a certification, or a certified copy of a foreign registration from the applicant’s country of origin. The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. See TMEP §§1002.01, 1003.03 and 1004.
If the foreign certificate of registration is not written in English, the applicant must provide an English translation. The translator should sign the translation. See TMEP §§1004.01 and 1004.01(b).
If further information or assistance is needed in responding to this Office Action, please feel free to contact the trademark attorney listed below.
/Shari L. Sheffield/
Shari Sheffield
Trademark Attorney
Law Office 110
703-308-9110 ext. 467
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.
Time of Request: November 02, 2003 02:11 PM EST
Number of Lines: 60
Job Number: 1862:0:19968750
Client ID/Project Name:
Research Information:
US Newspapers and Wires
((toledo w/2 spain)and watches)
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28 of 55 DOCUMENTS
Copyright 1998 N.Y.P. Holdings, Inc. All rights reserved.
The New York Post
August 4, 1998, Tuesday
SECTION: TravelPlus; Pg. 045
LENGTH: 770 words
HEADLINE: HOLY, TOLEDO!; A TOUR OF THE FAMED SPANISH CITY IS A GOTHIC EXPERIENCE
BYLINE: JANEL BLADOW
BODY:
IT was a rare, rainy day in Spain that we headed south from Madrid toward the
country's one-time capital. An hour later, there it was, rising out of the fog
like the mythic city Brigadoon.
First we spotted the spires of Toledo peeking through the clouds. As we drew
closer, a curtain of walls surrounding this medieval fortress loomed
protectively around the town, seemingly untouched by modern civilization.
Toledo has more monuments, cathedrals, castles and history in its thumb-size
peninsula than anyplace on earth. That's no exaggeration.
Settled around 192 B.C. by the Romans, Toledo today is a hubbub of history,
with an amphitheater and aqueduct remaining from its earliest inhabitants. For
antiquity buffs, it's as if the History Channel came alive. You won't know where
to look first.
Toledo's half-million residents have a right to be proud. In the sixth
century, the Germans invaded, and Visigoth Leovigildo made it the capital of his
kingdom. In 711, the Moors became masters.
Spanish monarchs waged war on the Moors over the years, until they finally
fell in 1085 to Alfons VI. For the next 400 years, Christians, Jews and Moslems
lived together within these hallowed walls.
The peaceful coexistence of Toledo was shattered in 1492, when the Catholic
Monarchs expelled Jews from Spain. The hilltop kingdom's reigning glory
continued to wane in 1561, when King Philip II moved the capital to Madrid, the
geographic center of the country.
The gods must be angry still; as we exited our tour bus, the sky opened and
we got a royal soaking.
We raced through one of nine gates in the medieval walls. Most visitors use
Puerta de Bisagra (Gate of the Hinge), built in 1550 to welcome Emperor Charles
V.
Two massive round towers flank the arch bearing his coat of arms. Next to it
is the oldest gate, Puerta Vieja de Bisagra, which goes back to the ninth
century.
As rain raged outside, our group roamed inside the cold, stone cathedral. Its
style is Gothic, the structure built between 1226 and 1492, and it's full of
treasures.
I was most taken with the local Mudejar art (combining Moorish, Jewish and
Spanish influences) and amazed by the large collection of paintings by Rubens,
Goya and El Greco. (You can visit the El Greco House Museum, a 15th-century home
near where the artist lived.)
The showers let up momentarily, and we made our way along a tiny alley to the
Synagogue of Santa Maria la Blanca and the Sephardic Museum, filled with
valuables of Jewish families who once lived there.
Sephardic Jews consider Toledo the second most important religious city after
Jerusalem.
Another two dozen galleries, museums and monuments are within walking
distance. But there's also plenty to do for those who like to shop, eat and meet
the locals.
Toledo is noted for its ceramics, delicate statues, colorful plates and tiles
decorated with hand-painted animals, flowers and historical scenes. Gaudy brass
and silver-plated swords are a mainstay of tourist shops, but you'll also find
embroidered tablecloths, napkins, bedding and blouses.
You can watch local craftsmen make jewelry and other gifts of Damascene by
pounding gold threads into metal.
Antiquing is another adventure in Toledo - some of Spain's best finds are
here. You can uncover old pottery, woodwork and fabrics.
Gourmands relish the local cuisine, a mixture of Moorish and Mediterranean,
specializing in Iberian ham, beef and stews made of small game.
The many outdoor cafes serve strong, rich Spanish coffee and delicate, sweet
pastries. But don't overlook Toledo's famous marzipan, the Moorish-inspired
almond paste candy.
Most people make Toledo a daytrip. But in their hurry, they're missing the
heart of Spain.
The mountains of Toledo are well-known for their hiking and small game
hunting (quail to rabbits). Many of Spain's finest vineyards are in the area and
open to tour. Nearby are the windmills of Don Quixote, Cervantes' Man of La
Mancha.
Local hotels run from the lavish four-star Domenico overlooking Toledo to the
historic three-star Maria Cristina in the 15th-century San Lazaro Hospital
building at the village's center.
We stopped at the Parador Conde de Orgaz, one of the government's many
tourist hotels in former palaces and estates.
Set on a hill to the southeast, it has a majestic view of Toledo, and is
pretty enough for a wedding reception, which is exactly what we ran into.
As our group raised our wine glasses in thanks for this trek back in time,
the sky let go with a monumental downpour.
I couldn't help getting Quixotic. I started chasing rainbows.
LOAD-DATE: August 4, 1998
108B8C
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Time of Request: November 02, 2003 02:11 PM EST
Print Number: 1862:0:19968750
Number of Lines: 60
Number of Pages: 1
108B8C
Print Request: Current Document: 7
Time of Request: November 02, 2003 02:21 PM EST
Number of Lines: 63
Job Number: 1862:0:19969371
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Research Information:
US Newspapers and Wires
((toledo w/2 spain)and clocks)
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Copyright 1999 Albuquerque Journal
Albuquerque Journal (New Mexico)
March 15, 1999, Monday
SECTION: Pg. 3
LENGTH: 812 words
HEADLINE: Spanish Store Forges a Trail to the Past
BYLINE: James Yodice Journal Staff Writer
BODY:
* With a penchant for heritage, Santa Fe merchant left one family business to
begin another
Spanish Trails International drips history. Replica swords made in Spain, a
tribute to the Spanish Colonial era.
Damascene art that dates back to about 600 B.C.
Books recounting the paths of ancient civilizations.
But mostly, Spanish Trails International is about the history of the people
who created it and make it go.
"Knowing your past," says Reyes Ulibarri, owner of Spanish Trails
International, "is so profoundly (important) for your future."
He ought to know.
Ulibarri traced his own roots back three centuries to a Capt. Juan Antonio de
Ulibarri, the original family patriarch who came to New Mexico in 1692.
"He's the father of all of (the Ulibarri family) here," Ulibarri says.
And there is a certain symmetry to Ulibarri's settling in Santa Fe with his
business.
It was 300 years later, in 1992 -- almost to the month -- when Ulibarri
started Spanish Trails International in Villa Linda Mall.
After operating the business out of his home, tinkering with jewelry and
doing mail orders, he said he began to attend Hispanic conventions and art shows
in an effort to broaden his client base.
Eventually he found a home in Villa Linda in a kiosk, expanding the operation
a little more.
Finally, in late summer of 1997, Villa Linda management saw Ulibarri's
progress as a vendor and asked him if he wouldn't mind having a store to call
his own.
Suffice it to say he didn't mind.
Ulibarri runs the business with his family always nearby his wife, Veronica,
and his four children: Sonia, Samuel, Solomon and Sarah. Reyes and Veronica
Ulibarri home-school their children, and the eldest two (Sonia and Samuel) have
some hands-on experience in the store.
As Ulibarri explains, passing along a business from one generation to the
next is the way it's always been done in his family. His father and his father
before him worked in the sand and gravel business, starting in the 1950s.
But Ulibarri saw both his father and grandfather struggle with their health
due to the heavy lifting involved, and he decided to go another way rather than
risk chronic back problems.
"It takes its toll on your body," he says. "It was either seek a new career
or expect the same."
Now he owns what is certainly one of the more unique businesses in town.
Veronica's father, Medardo Sanchez, is New Mexico-born but visited Spain
extensively and set Ulibarri up with a network of vendors in Spain, who sell the
merchandise to Ulibarri here in Santa Fe.
"Today I pick up the phone and explain what I need," Ulibarri says with a
shrug of his shoulders. "It's here in 10 days."
That includes the swords, of which there are 40 or 50 varieties in the store
ranging from $100 to $600.
The swords are made in Toledo, Spain, where swords have been manufactured for
the last 1,000 years, Ulibarri says.
There also is some French fencing equipment available, which Ulibarri says he
sells to groups here and in Albuquerque.
But make no mistake Spanish Trails International is about Spain, and it's
also about northern New Mexico. Ulibarri displays the work of many New Mexico
artists, primarily in the form of jewelry, pottery, wood carvings and weaving.
"The theme is to blend the cultures from Spain and Europe in a Native
American region," Ulibarri says.
Some of the artistry is quite distinct often pieces have 24-karat gold
hand-hammered onto copper or brass bases. These pieces come in the form of key
chains or decorative plates or even wall clocks.
Ulibarri often says how important his family is to his success, and adds that
by the time they all are of high school age (Samuel at 14 is the oldest), "they
'll have the knowledge to know how to run a business. I feel called to raise my
children in a nurturing, God-valued environment. That's why I do this, to pass
on the heritage."
He can also pass on a heritage to anybody who wants to spend $39.
For that price, Ulibarri can trace the history of any Hispanic surname. Give
him the name, and a researcher will trace the roots of that particular name as
far back as it goes. Each surname, he says, has a symbol as well.
Ulibarri spent many hours in libraries in Santa Fe and Albuquerque, finding
his roots.
"It's interesting how many people are not aware of their ancestral roots," he
says.
Reyes Ulibarri proudly does not count himself among that group.
PHOTOS BY: SARAH MARTONE/FOR THE JOURNAL
PHOTO: b/w
CHECK MATE: Benjamin Eisman discovered an early interest in chess at Spanish
Trails International in Santa Fe's Villa Linda Mall. Benjamin was at the mall
shopping with his father last week on his fifth birthday.
PHOTO: b/w
METICULOUS MATADOR: A Spanish bullfighter figurine and a Spanish fan sit in
the display case in Spanish Trails International.
LOAD-DATE: March 17, 1999
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Time of Request: November 02, 2003 02:21 PM EST
Print Number: 1862:0:19969371
Number of Lines: 63
Number of Pages: 1
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[2]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.