To: | Sazerac Company, Inc. (chgtm@bannerwitcoff.com) |
Subject: | TRADEMARK APPLICATION NO. 76524116 - NEW ORLEANS' ORIGINAL - 10864.00094 |
Sent: | 12/30/03 10:54:16 AM |
Sent As: | ECom116 |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/524116
APPLICANT: Sazerac Company, Inc.
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CORRESPONDENT ADDRESS: JAMES V. CALLAHAN BANNER & WITCOFF LTD. 10 S WACKER DR STE 3000 CHICAGO IL 60606-7437
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom116@uspto.gov
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MARK: NEW ORLEANS' ORIGINAL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 10864.00094
CORRESPONDENT EMAIL ADDRESS: chgtm@bannerwitcoff.com |
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 76/524116
The assigned trademark examining attorney has reviewed the referenced application filed on June 13, 2003, and has determined the following.
Search Results
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
2(e)(2) - Geographically Descriptive Refusal
Registration is refused because the mark is primarily geographically descriptive of the origin of applicant’s goods. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04(b).
The primary significance of the term “NEW ORLEANS” is geographic, and applicant’s goods come from the geographical place named in the mark. Therefore, a public association of the goods with the place is presumed. In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982). TMEP §1210.04(b).
Furthermore, the term “ORIGINAL” is laudatory. Laudatory terms, those which attribute quality or excellence to goods or services, are equivalent to other descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §1209.03(k). That is, laudatory terms are nondistinctive and unregistrable without proof of acquired distinctiveness. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (BEST and PREMIER); In re Dos Padres Inc., 49 USPQ2d 1860 (TTAB 1998) (QUESO QUESADILLA SUPREME); In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995) (SUPER BUY); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990 (TTAB 1984) (ORIGINAL BLEND); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA’S FAVORITE POPCORN). The addition of this descriptive term fails to overcome the geographic nature of the proposed mark.
For the foregoing reasons, registration on the Principal Register is refused.
Supplemental Register
Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal(s) under Section 2(e)(2) by amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal(s), such a response is not appropriate in the present case until an acceptable allegation of use is filed. The instant application was filed under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed. 37 C.F.R. §2.47(d); TMEP §815.02, 816.02 and 1102.03.
If applicant files an allegation of use and also amends to the Supplemental Register, please note that the effective filing date of the application will then be the date of filing of the allegation of use. 37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement.
Identification of Goods
The current wording used to describe the goods needs clarification because the term “mixed drinks” is indefinite. Applicant may adopt the following identification of goods, if accurate:
Alcoholic beverages, namely, whiskies and prepared alcoholic cocktails,
in Class 33.
TMEP §1402.01.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Linda M. King/
Trademark Attorney
Law Office 116
703-306-7907
Linda.King@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.