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. 

The assigned trademark examining attorney has reviewed the referenced application filed on July 2, 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 services.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04(b).

A two-part test is applied to determine whether a mark or term is geographically descriptive.  First the term must be the name of a place known generally to the public.  Second, the public must be likely to make a services-place association, i.e., believe that the services originate from that location.  In re California Pizza Kitchen, 10 USPQ2d 1704, 1705 (TTAB 1989) (goods); In re MCO Properties, Inc., 38 USPQ2d 1154, 1155 (TTAB 1995) (services).

The attached evidence from the American Heritage Dictionary[1] shows that the primary significance of the term “DOVER” is the name of a geographic location that the public generally knows.  In addition, the specimens of record confirm that the mall is located in Dover (Delaware).  The public is likely to believe the services originate from that place because the mall is located in Dover.  Further, that geographic location is not remote or obscure, nor does the term have any other significant non-geographic meaning.  Thus there is a presumed services-place association.  See In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).

The addition of a highly descriptive or generic term to a geographic term does not serve to obviate a determination of geographic descriptiveness.  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); TMEP §1210.07(a).  In this case, the addition of the term COMMONS, which is a descriptive term in the context of shopping malls, does not obviate the fact that DOVER COMMONS is primarily geographically descriptive.  See attached articles from the Lexis-Nexis® database.

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.

/Heather D. Thompson/

Trademark Examining Attorney

Law Office 103

703.308.9103 ext. 223 [phone]

703.746.8103 [fax]

ecom103@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.

                                                                         108B8C

Print Request:   Selected Document(s): 1,2,5,8,11,14,41,44,46

Time of Request: January 07, 2004  10:45 AM EST

Number of Lines: 257

Job Number:      1861:0:27262263

Client ID/Project Name: 

Research Information:

 News,  All (English,  Full Text)

plur(commons) and nocaps(commons) w/5 mall

1 of 234 DOCUMENTS

Copyright 2003 The Hearst Corporation 

The Times Union (Albany, NY)

December 22, 2003 Monday ONE STAR EDITION

SECTION: CAPITAL REGION, Pg. B2

LENGTH: 782 words

HEADLINE: State-run traffic center attempts to help drivers avoid road hassles

BODY:

...house traffic reporting operation helps his company keep updates current, as often as every 10 minutes in the morning on WGY (810 AM).

Q: The road between Crossgates Mall and Crossgates Commons is confusing, especially at night. There is only a one-way stop sign, which is bent. With no lights, it's hard to see the stop sign and the turn for Washington Avenue Extension west. Is that road ...

...seems to depend in part on whether the person talking is thinking about police response, snowplowing or maintenance.

Regarding safety and confusion at that spot, where traffic leaving the mall can go either to Crossgates Commons or to Washington Avenue Extension westbound, we've got good news. Doney reported back the day after our call that the signs are on Crossgates property -- and that the mall and commons are taking action.

He said a groundskeeper straightened the stop sign, and a contractor will install a larger reflective arrow pointing to Washington Avenue Extension. As to lighting, he said, "we'll look into that."

Q: The ...

2 of 234 DOCUMENTS

Copyright 2003 Post-Standard, All Rights Reserved. 

 The Post-Standard (Syracuse, NY)

December 20, 2003 Saturday

SECTION: NEWS; Pg. A1

LENGTH: 1042 words

HEADLINE: SHOPPERS, STORE OWNERS SEE A DIFFERENCE

BYLINE: By Emily Kulkus Staff writer

BODY:

...more families in the mall afterward. The people they wanted to get out of the mall weren't shoppers."

Several Carousel Center merchants said most of the teenagers causing problems before the policy congregated in the mall commons, Carousel's lowest level, which includes the Kahunaville arcade and the largest amount of open space in the building.

Workers at Joanne Fabrics and Crafts and Against All Odds, two of the five main retailers in the commons, had opposite reactions to the policy.

Before June, "We had to close the gate for security reasons at least once a weekend," said Luci Schenck, team leader at Joanne Fabrics. "One particular ...

5 of 234 DOCUMENTS

Copyright 2003 The News and Observer 

The News & Observer (Raleigh, North Carolina)

December 4, 2003 Thursday, FINAL EDITION

SECTION: BUSINESS; Pg. D1

LENGTH: 717 words

HEADLINE:  Store quits the field

BYLINE: Samantha Thompson Smith, Staff Writer

BODY:

...more stores in

three years in the Triangle, including one that opened last year

about three miles north of Sports Authority on Glenwood Avenue,

at the new Brier Creek Commons shopping center. 

Dick's, which had an initial public offering of its stock last

year, is expected to open another Raleigh store on Capital

Boulevard next year at Triangle Town Center. The store will be

the biggest yet, a two-story, 80,000-square foot flagship on the

mall's commons area near the main entrance. 

The Sports Authority has grown through acquisition. In August,

the company merged with Gart Sports, making it the top big

retailer for sporting goods. The company's third- ...

8 of 234 DOCUMENTS

Copyright 2003 Knight Ridder/Tribune Business News

Copyright 2003 Waterbury Republican-American 

Waterbury Republican-American

September 5, 2003, Friday

KR-ACC-NO: WY-SHOPPING

LENGTH: 320 words

HEADLINE: Waterbury, Conn., Shopping Center Offers Chance to Save Money

BYLINE: By Marc Silvestrini

BODY:

In an effort to drum up business on its slowest day of the week, the Brass Mill Center and Commons has reintroduced a campaign that offers Wednesday shoppers a chance to save some money.

The Waterbury shopping center, which sees thousands of shoppers walk through its doors each week and is one of the area's largest ...

...Samson said. Malone said convincing 23 out of 125 or so stores to participate in the sale is a fairly typical result given the high number of national retailers operating stores at the mall and commons.

-----

To see more of the Waterbury Republican-American, or to subscribe to the newspaper, go to http://www.rep-am.com

11 of 234 DOCUMENTS

Copyright 2003 Bell & Howell Information and Learning

Business Dateline

Copyright 2003 New Jersey Business Industry Association 

New Jersey Business

August 1, 2003

SECTION: Vol. 49, No. 8; Pg. 39; ISSN: 00285560

B &H-ACC-NO: 379879481

LENGTH: 1688 words

HEADLINE: NEW JERSEY & MALLS: PERFECT TOGETHER

AUTHOR-NAME: Saliba, George N

BODY:

...buying despite the sluggish economy, layoffs and global uncertainty.

David Tripp is vice president and director of corporate communications at The Rouse Company, Columbia, Maryland. The company's New Jersey properties include Bridgewater Commons, Bridgewater; Woodbridge Center, Woodbridge; Willowbrook, Wayne; and Paramus Park, Paramus. Tripp says that while there is a general malaise in the economy, he hopes retail sales will pick-up, over time.

" ...

...malls or sold them. In fact, over the past decade, The Rouse Company has sold more than 40 properties and upgraded and expanded most of its remaining portfolio, Tripp says. It has also purchased new properties, such as Bridewater Commons, which it bought in 1998. Today, the company has 31 properties, of which it grades 90 percent as either A or a B.

As examples of upgrades, Tripp notes that Woodbridge Center and the Willowbrook Mall used to have ...

...Experimenting in malls isn't new In 1971, The Rouse Company opened the first food court in an enclosed mall, and in 1976, the company pioneered the concept of pushcarts and kiosks in mall common areas.

Kavanagh, at the International Council of Shopping Centers, talks about such ventures.

"A company might not be 100 percent [sure their business] will work," he says, "but with a [kiosk or a ...

14 of 234 DOCUMENTS

Copyright 2003 The Indianapolis Star

All Rights Reserved 

The Indianapolis Star

May 31, 2003 Saturday City final Edition

SECTION: STARNORTH; INSIDE TODAY; Pg. 1N

LENGTH: 294 words

HEADLINE: INSIDE TODAY

BODY:

...Bill Nye, the Science Guy" -- will present "Tech Trek: Journey of the Generations" as part of a program for the Glendale Library Branch, 6101 N. Keystone Ave. The free program will be in the mall commons. For more information, call 1-317-269-1791.

Coming Tuesday

Although it's a town of roughly 10,000, Westfield is awash in ZIP codes -- five, to be exact. It shares ...

41 of 234 DOCUMENTS

Copyright 2002 Courier News (Bridgewater, NJ)

All Rights Reserved 

Courier News (Bridgewater, NJ)

October 18, 2002 Friday

SECTION: LIFESTYLE; Pg. 8C

LENGTH: 741 words

HEADLINE: HOT KOHL'S

BYLINE: Pamela Sroka Mary Iuvone, Staff

BODY:

...By PAMELA SROKA

Staff Writer

I'm not saying anything new when I call Central Jersey a shopping jungle.

Behind every bush, beneath every stone, there are department stores and malls and promenades and "shoppes" and commons and strip malls and villages and towne centers and plazas and junctions and ... you get the idea.

But there's no jungle like the new Kohl's in Hillsborough. It gives new meaning to "survival of the fittest."

44 of 234 DOCUMENTS

Copyright 2002 Paddock Publications, Inc. 

Chicago Daily Herald

September 4, 2002, Wednesday F3

SECTION: NEIGHBOR; Pg. 1

LENGTH: 820 words

HEADLINE: The best of mall worlds Geneva Commons to combine upscalestores, Chicago restaurants and easy parking

BYLINE: Tona Kunz Daily Herald Staff Writer

BODY:

To Carolyn Wirsing, the opening Thursday of Geneva Commons outdoor mall means more time with her son Chase. 

Quality time. Not time crammed together in bumper-to-bumper traffic. No more grindingly slow trips to Fox Valley Center ...

...California Pizza Kitchen, Claddagh Irish Pub and Smokey Bones BBQ and Sports Bar have yet to set an opening date, said Anderson marketing manager Tracy Nemenz. 

Fallon depicts Geneva Commons as a retail center for the serious shopper with sophisticated tastes. 

"It is not a real teeny-bopper hangout like the mall," Fallon said. "It is an upscale shopping center where you go ...

...just awesome," said Genevan Beverly Block, whose excitement about the mall's opening motivated her to sidestep the construction cones and tour the site last week. 

Much like the mall marketers, Block views Geneva Commons as the best of the best: a mix of commonly used stores and hard-to-find upscale shops; sit-down restaurants and front-door parking. 

Geneva Commons uses aesthetics similar to Danada Square in Wheaton. Although laid out in the open air, the proximity parking style of strip malls, landscaping and clusters of shops diminish the common commercial look. Benches, fountains, and brick pavers along extra-wide sidewalks make it look a bit like a small-town shopping area. 

And to top it off, there will be ...

...speakers. City officials and mall operators are negotiating what songs and how often the carillon will play, Fallon said. 

GRAPHIC: Let's get ready to SHOP... 

The newest Fox Valley shopping complex, Geneva Commons, opens Thursday on Randall Road, with 68 percent of its businesses ready for shopping and dining. Here's a look at some facts and figures related to the mall. 

- 42 acres, bounded by Williamsburg ...

GRAPHIC:

gencommons_1na083002RW Rocco Savillo of Thatcher Oaks Awnings works on the facade of the Yankee Candle Company Friday as Geneva Commons mall gears up for its grand opening. The mall, which will include a wide range of stores and restaurants, opens Thursday. Rick West/Daily Herald gencommons_2na083002RW Andrea Ruffolo builds a wall of jeans at the Express store in Geneva Commons last week. Ruffolo manages the Woodfield Shopping Center location. Rick West/Daily Herald GRAPHIC: (text at bottom of article) GRAPHIC: Geneva Commons store guide

46 of 234 DOCUMENTS

Copyright 2002 Stuart News Company 

 Press Journal (Vero Beach, FL)

September 1, 2002, Sunday

SECTION: Indian River County; Pg. D1

LENGTH: 494 words

HEADLINE: 'COMMONS' KNOWLEDGE: BEST BUY'S MOVING IN

BYLINE: Chris Kauffmann staff writer

BODY:

THE BOTTOM LINE

The best bet. 

The popular appliance store chain Best Buy will be taking over the remaining 30,000 square feet of the old HomePlace site in Indian River Commons, Indian River Mall/Commons officials announced last week. 

The store will open either late this year or early next year, said Patti Jamar, the mall's general manager. As previously announced, in October Bed Bath and ...

Best Buy is just one of several new stores coming to the mall and the commons. Michael's Arts and Crafts, a chain hobby and crafts franchise will be opening a 23,400-square-foot store in February where the old Office Max used to be. Office Max also left last ...

...late fall. They will be replacing temporary tenants who either moved out of the mall or moved to other locations in the mall. 

"We're very excited about the lineup of new stores coming both at the mall and at the commons," Jamar said. "This list of new tenants will complement our existing shops." 

Jamar said the tenants bring the occupancy at Indian River Mall to 89 percent and to 96 percent at Indian River Commons. 

Chipping away. 

The middle chunk of the three properties that once made up the old Velde Ford car dealership on U.S. 1 in Vero Beach has been leased by its owner, Grimm Management ...