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. 

 

 

Serial Number  76/580635

 

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

 

Search Results

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

2(e)(2) - Geographically Descriptive Refusal

The examining attorney refuses registration on the Principal Register because the mark is primarily geographically descriptive of the applicant’s goods/services.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04(b). 

 

Please see the attachments which show that ACONCAGUA refers to a region in South America.

 

In the alternative, if the goods do not come from this region:

 

2(e)(3) - 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). 

 

Aconcagua is a mountain and surrounding area known for adventure sports such as hiking and mountain biking (see attachment). If the goods do not have a geographic nexus to this region, the mark is geographically deceptively misdescriptive.

 

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 informality.

 

Provide Information Regarding the Goods

For the record, applicant must specify where the goods and/or services originate.  37 C.F.R. §2.61(b); TMEP §1210.03.

 

Applicant must indicate specifically whether the goods will be manufactured or produced in, or will 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).

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

My Law Office will move on October 18, 2004.  To reach me by phone after that date call (571) 272-9135.  To submit a fax to this Office after that date, please send it to the Law Office fax number, namely (571) 273-9135.

 

 

/Nora Buchanan Will/

Trademark Attorney, Law Office 116

current phone no.: 703-306-7915

phone no. as of 10/18/04: 571-272-9135

 

 

 

 

How to respond to this Office Action:

 

You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE:  For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.

 

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.