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  76/563378

 

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

 

Search Result

 

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.

 

Mark is Primarily Geographically Descriptive

 

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 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).

 

Myrtle Beach is a “city of eastern South Carolina on the Atlantic Ocean east of Columbia. It is a popular resort. Population, 24,848”[1] and is the name of a geographic location that the public generally knows.  The public is likely to believe the services originate from that place because the applicant provides vacation related services in Myrtle Beach.  Thus there is a presumed services- place association.  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).

 

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).  The addition of TRIPS to the geographical term does not obviate the refusal.

The applicant should also note the following additional ground for refusal.

 

Mark is Merely Descriptive

 

Registration is refused because the proposed mark merely describes the applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999) (Board found that DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (CONCURRENT PC-DOS found merely descriptive of “computer programs recorded on disk;” it is unnecessary that programs actually run “concurrently,” as long as relevant trade clearly uses the denomination “concurrent” as a descriptor of this particular type of operating system); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) (“Whether consumers could guess what the product is from consideration of the mark alone is not the test”); TMEP §1209.01(b).

 

A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive.  For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive.  In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b).

 

The applicant has applied to register the mark MYRTLE BEACH TRIPS for “entertainment services, namely family vacation packages, show packages, and golf packages.”  The mark is merely descriptive of the services.  The applicant provides the services for trips to Myrtle Beach.  Accordingly, the mark is not registrable on the Principal Register.

 

Supplemental Register

 

Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. Section 1091; 37 C.F.R. Sections 2.47 and 2.75(a); TMEP sections 202.02(b) and 1115.

 

Informalities

 

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.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issues.

Identification of Services

 

Applicant must clarify the identification of services by specifying the nature of the services.  The applicant encompasses services classified in more than one class.

 

The applicant may adopt the following identification, if accurate:

 

Arranging for ticket reservations for shows as part of a vacation; arranging for golf playing at golf courses, all in Myrtle Beach, in international class 41;

 

Travel services, namely, making reservations and booking for temporary lodging for family vacation packages in Myrtle Beach, in international class 43.

 

TMEP §1402.01.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of  Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

Classification

 

If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Classes 41 and 43.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq. 

 

Applicant must adopt the appropriate international classification number for the goods and services identified in the application.  The United States uses the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization to classify goods and services.  37 C.F.R. §6.1; TMEP §§1401 et seq.

Combined Application

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

(3)   Applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application, 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and

 

(c)    both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).

 

 

 

Disclaimer

 

The applicant must insert a disclaimer of TRIPS in the application.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §1213.  The applicant must insert the required disclaimer even if registration of the mark is sought on the Supplemental Register, because the word is generic.  In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP §1213.03(b).  The applicant provides services for trips to Myrtle Beach.

 

A properly worded disclaimer should read as follows:

 

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

 

 

 

/Alex S. Keam/

Attorney

Law Office 114

Phone: (703) 308-9114 ext. 140

Fax for Responses: (703) 746-8114

 

 

 

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.