Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/610453

 

This letter responds to the applicant’s communication filed on November 4, 2005.

 

Since the goods will not be produced or manufactured in Norfolk, the refusal to register under Trademark Act Section 2(e)(2) is withdrawn.

 

2(e)(3) - Geographically Deceptively Misdescriptive Refusal

 

Applicant’s remarks regarding the refusal have been reviewed, but found unpersuasive. Thus, the refusal under Trademark Act Section 2(e)(3), 15 U.S.C. §1052(e)(3), is maintained and now made FINAL for the reasons set forth below.  37 C.F.R. §2.64(a).

 

A mark is primarily geographically deceptively misdescriptive if:

 

(1)     the primary significance of the mark is a generally known geographic location;

(2)     the goods or services for which applicant seeks registration do not originate in the place identified in the mark;

(3)     purchasers would be likely to believe that the goods or services originate in the geographic place named in the mark; and

(4)     the misrepresentation is a material factor in the purchaser’s decision to buy the goods or use the 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), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003); TMEP §§1210.01(b) and (c).

 

The attached evidence from the website www.answers.com shows that the primary significance of the term “NORFOLK” in the mark is the name of a geographic location. 

 

The record indicates that applicant is located in Caledonia, Michigan, which is not the geographic place named in applicant’s proposed mark.  Applicant states that the “goods set forth in the description of goods are not produced or manufactured in the Norfolk area.”  37 C.F.R. §2.61(b); TMEP §1210.03.

 

To support a finding of primarily geographically deceptively misdescriptiveness, there must a goods-place association that is material to the purchasing decision.  In re Les Halles De Paris J.V., 334 F.3d 1371, 1373, 67 USPQ2d 1539, 1541-1542 (Fed. Cir. 2003); In re California Innovations Inc., 329 F.3d 1334, 1341, 66 USPQ2d 1853, 1859 (Fed. Cir. 2003), reh’g denied, 2003 U.S. App. LEXIS 18883 (Fed. Cir. Aug. 20, 2003).  If the relevant goods, or related goods, are a principal product of the geographical area named by the mark, then the deception will most likely be found to be material.  In re California Innovations, Inc., supra; In re Save Venice New York Inc., 259 F.3d. 1346, 59 USPQ2d 1778 (Fed. Cir. 2001); In re Wada, 194 F.3d 1297, 52 USPQ2d 1539 (Fed. Cir. 1999); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984); TMEP §§1210.05(b) and (b)(i).

 

One or more gazetteer or similar excerpts showing that applicant’s goods (or sufficiently related goods) are a principal product of that geographic area is sufficient evidence to show that a particular geographic location is renowned for specific goods.  House of Windsor, 221 USPQ at 57.

 

The examining attorney attaches evidence to support a goods/place association that is material to the purchasing decision. The material is in the form of articles and advertisements from www.google.com that shows the city of Norfolk is known for furniture and office furniture.

 

This record indicates that the Norfolk, Virginia area is a well-known center for the manufacture of furniture, so when consumers view NORFOLK used to identify “office furniture” they are likely to purchase such items believing that such goods origin in NORFLOK. As such, the proposed mark is primarily geographically deceptively misdescriptive.

 

Responsive to a Final Refusal

 

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing a petition to the Director if permitted by 37 C.F.R. §2.63(b).  37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, See 37 C.F.R. §2.146 and TMEP Chapter 1700.  If applicant fails to respond within six months of the mailing date of this refusal, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

/Amos T. Matthews/

Examining Attorney

Law Office 108

(571) 272-9346

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.