Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

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  76/540404

 

FIRST OFFICE ACTION

 

 

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

 

Search of Office Records -- Pending Application

 

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial No.76/345900.  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act.  The filing date of the referenced application precedes the applicant's filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

 

 

Geographically Deceptively Misdescriptive Refusal

 

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 primary significance of the term “SAPPORO” is geographic (see attached map showing Sapporo, Japan).  The attached sampling of material downloaded from the internet demonstrate that Sapporo is famous for beer.  Thus, the public is likely to believe that the goods/services come from this place.  Furthermore, this belief would materially influence consumers to purchase the goods/services.  In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984).  See TMEP §§1210.01(c), 1210.04 et seq. and 1210.05(a).

 

Thus, due to the NAFTA changes in the Lanham Act, the PTO must deny registration under § 1052(e)(3) if (1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and (3) the misrepresentation was a material factor in the consumer’s decision.  In re California Innovations, Inc. 66 UPSQ2d 1853 (Fed. Cir. 2003).

 

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.

 

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.

 

Disclaimer (If the Applicant’s Goods Originate in Sapporo)

 

Alternatively, if the applicant indicates that its goods originate in Sapporo, the applicant must disclaim the geographically descriptive wording "SAPPORO" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  Specifically, the primary significance of the term "SAPPORO" is geographic, if applicant's goods come from the geographical place named in the mark, a public association of the goods 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).

 

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

 

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

 

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

 

Ownership of Prior Registrations

 

If the applicant is the owner of Registration Nos. 1722274, 2203695, and 2676408, the applicant must submit a claim of ownership.  37 C.F.R. Section 2.36; TMEP section 812.

 

Signed Declaration

 

The application must be signed, and verified or supported by a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.33.  No signed verification or declaration was provided.  Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application.

 

If the application is based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the verified statement must include an allegation that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. §2.34(a)(1)(i); TMEP §§804.02, 806.01(a) and 901. 

 

If the application is based on Trademark Act Section 1(b) or 44, 15 U.S.C. §1051(b) or 1126, the verified statement must include an allegation that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101. 

 

Responding to This Office Action

 

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.

 

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

 

 

 

 

 

 

/Susan Kastriner Lawrence/

Trademark Examining Attorney

Law Office 116, (703) 306-7919

fax: (703) 746-8116

 

 

 

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 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.