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  76/582591

 

This letter responds to the applicant’s communication filed on November 18, 2004, wherein the applicant amended its identification of goods, specified the meaning of CINTRA and argued against the citation of the prior pending application.  The amendment to the identification of goods is acceptable and made of record.  The meaning of CINTRA is noted.  The citation of the prior pending application is maintained and continued.  The applicant should note the following new requirements.

 

Section 2(e)(2) Geographically Descriptive Inquiry

 

In its response, the applicant indicated that the meaning of the mark is the geographic location Cintra, Portugal.  Therefore, the applicant must specifically indicate 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.  The applicant must also indicate if it has any connection to Portugal.  For example, this could be operating a European headquarters in Portugal.  If the primary significance of a mark is to indicate a geographic location which is neither obscure nor remote and the 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).

 

If the applicant’s goods originate in Cintra, Portugal, registration on the Principal Register will be refused because the mark is primarily geographically descriptive of the origin of the applicant’s goods.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04(b). 

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been filed.  37 C.F.R. §§2.47(d) and 2.75(b); TMEP §1102.03.  When a Section 1(b) application is amended to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 1102.03.

 

Please note, however, if the applicant’s goods do not come from Cintra, Portugal, this mark may be refused under Sections 2(a) and (e)(3) of the Trademark Act as Geographically Deceptive and Geographically Deceptively Misdescriptive.

 

Standard Character Claim

 

The applicant’s mark appears to be a Standard Character mark.  The applicant must submit the following standard character claim:  “The mark is presented in standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

Leigh Lowry

/LeighLowry/

U.S. Patent and Trademark Office

Examining Attorney

Law Office 115

(571) 272-9725

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.