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  76/553626

The assigned examining attorney has reviewed the referenced application and 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.

 

REFUSAL – Geographically Deceptively Misdescriptive

Registration is refused because the proposed mark consists of or comprises geographically deceptively misdescriptive matter in relation to the identified goods.  Trademark Act Section 2(e)(3), 15 U.S.C. §1052(e)(3); In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003); In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003); 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).

The primary significance of the phrase, VEGAS DE GUAYAQUIL is geographic.  The English translation of VEGAS DE GUAYAQUIL is “plains or valley of GUAYAQUIL” which is a city located in Ecuador.  The public is likely to believe that the Applicant’s goods come from this place because GUAYAQUIL is know as a geographic region where tobacco is grown, and cigars are manufacturer. Tobacco is one of GUAYAQUIL’s principal exports and it has an industry that manufactures cigars. See attachment # 1.  The Trademark Examining Attorney refers to the excerpted articles from her search of the Internet using GOOGLE in which Guayaquil, Ecuador is referenced in describing a geographic region where tobacco is grown and cigars are manufactured.  See attached articles.  Also attached is a copy of the Applicant’s website, which describes its goods as “made in Ecuador”. See attached Article # 6.

The record indicates that Applicant, Tropical Tobacco, Inc., is located in Miami, Florida, which is not the geographic place named in Applicant’s proposed mark.  Applicant must specifically state whether any aspect of its goods originate from or have any other connection with, the geographic place named in the mark.  37 C.F.R. §2.61(b).  If the primary significance of a mark is to indicate a geographic location, which is neither obscure nor remote, and applicant’s services are performed, at least in part, in the location indicated, then the public is likely to believe that the geographic term identifies the place from which the services originate.  In re Chalk’s International Airlines, Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988); TMEP §1210.04(b).

A mark is geographically deceptively misdescriptive if:

 

• the mark contains a geographic term and the goods or services for which applicant seeks registration neither have their origin in nor have any other connection with that geographic location;
• purchasers are likely to believe, erroneously, that the goods or services in question originate in or are somehow connected with the geographic place named in the mark; and
• that erroneous belief as to geographic origin would materially affect the purchaser’s decision to buy the goods or services in question.

 

In re Les Halles De Paris J.V., 334 F.3d 1371, 1373, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003); In re California Innovations Inc., 329 F.3d 1334, 1341, 66 USPQ2d 1853, 1859 (Fed. Cir. 2003); See In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989).

 

For the above reasons, the mark, VEGAS DE GUAYAQUIL is geographically deceptively

misdescriptive and registration is refused.

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.  The applicant should also note the following. If in the event the Applicant’s goods come from or are somehow connected with the geographic place named in the mark, then in the alternative, the following Refusal is provided.

 

REFUSAL 2(e)(2) Geographically Descriptive

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).  Applicant is using the mark, VEGAS DE GUAYAQUIL in connection with the goods, cigars, in International Class 034.

 

The English translation of the phrase, VEGAS DE GUAYAQUIL, in the applicant’s mark, is “plains or valley of GUAYAQUIL”.  The word GUAYAQUIL describes geographic locations, namely a city in Ecuador.  Guayaquil is the largest city of Ecuador, in the western part of the country near the Gulf of Guayaquil, an inlet of the Pacific Ocean, [1] and describes a feature of the goods, namely the geographic origin. See attached definition. 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 goods-place or services-place association, i.e., believe that the goods or 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 dictionary definition shows that the primary significance of the term,  GUAYAQUIL is the name of a geographic location that the public generally knows.  The public is likely to believe the goods originate from that place because the Applicant’s web site used the mark in connection with the goods and a statement that the goods are “Made in Ecuador.”  Thus there is a presumed goods place association.  Further, that geographic location is not remote or obscure, nor does the term have any other significant non-geographic meaning.  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). 

 

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 primary significance of a mark is to indicate a geographic location which is neither obscure nor remote, and 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’s mark, VEGAS DE GUYAQUIL also contains the generic term, “plains or valley”.  The word, plain(s) describes an extensive, level, usually treeless area of land.[2] The word, “valley” describes elongated lowland between ranges of mountains, hills, or other uplands, often having a river or stream running along the bottom.[3] See attached definitions.   The addition of a 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). 

 

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.

 

Advisory – Supplemental Register

Although the Trademark Examining Attorney has refused registration on the Principal Register, applicant may respond to the stated Geographically Descriptive Refusal under Section Trademark Act Section 2(e)(2), 15 U.S.C. §1052(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.

 

Disclaimer of Wording Required

If the mark is determined to be otherwise registrable, then applicant must still disclaim the following unregistrable matter, VEGAS, because it is generic as used in the context of the goods.

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use VEGAS part from the mark as shown.

 

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

Informality

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality:

Translation of Foreign Wording

The applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.61(b); TMEP §809.  Examining attorney suggest the following if accurate:

 

The English translation of the phrase, VEGAS DE GUAYAQUIL is “plains or valley of GUAYAQUIL.

 

Odessa Bibbins

/Odessa Bibbins/

Trademark Attorney

Law Office 113

Telephone: (703) 308-9113 x 475

Fax: (703) 746-8113 

 

ADVISORY:  The Madrid Protocol Implementation Act of 2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (“MPIA”) is effective November 2, 2003.  It is posted on the USPTO website at http://www.gov.uspto.report/web/trademarks/PL107_273.htm#D.  A Final Rule, published in the Federal Register on September 26, 2003 is posted at http://www.wipo.int/madrid/en/.

 

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.