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  76/626014

 

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

 

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.

 

Section 2(e)(2)—Geographically Descriptive Refusal

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 et seq.

 

A three-part test is applied to determine whether a mark is primarily geographically descriptive of the goods and/or services within the meaning of Trademark Act Section 2(e)(2):   

(1)     the primary significance of the mark must be geographic, i.e., the mark names a particular geographic place or location;

(2)     purchasers would be likely to make a goods-place or services-place association, i.e., purchasers are likely to believe the goods or services originate in the geographic location identified in the mark; and

(3)     the goods and/or services originate in the place identified in the mark. 

 

TMEP §1210.01(a); See In re MCO Properties, Inc., 38 USPQ2d 1154 (TTAB 1995); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989).

 The attached evidence from Google® and Getty Thesaurus of Geographical Names  shows that the primary significance of the term “BOXER ELDER” in the mark is the name of a geographic location.  Purchasers are likely to believe the services originate in that geographic location.  Thus there is a presumed services-place association in this case.  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.

 A prima facie showing that a public association exists between applicant’s services and the geographic place named in the proposed mark is sufficient to support a refusal.  The named geographic location need not be famous, but rather only likely to be associated with applicant’s goods and/or services.  See, e.g., In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985).

 Here, BOX ELDER, is well-known to the customers for the applicant’s services, namely the individuals and businesses located in Box Elder County

 Therefore, the mark is primarily geographically descriptive.  Accordingly, the mark is refused registration under section 2(e)(2) on the Principal Register.

 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.

 Section 2(f) Suggested—Distinctiveness Based on Five Years’ Use

The record indicates that applicant has used its mark for a long time; therefore, applicant may seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f), based on acquired distinctiveness.  To amend the application to Section 2(f) based on five years use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the goods and/or services through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

 

Applicant must verify this statement with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §1212.05(d).

 

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

 

Specimen

Applicant must submit (1) a substitute specimen showing the mark as it is used in commerce in the sale or advertising of the services, and (2) a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09.  A sample declaration appears above.

The current specimen of record comprises cover of a telephone directory and table of contents.  This specimen is unacceptable as evidence of actual service mark.  To be acceptable a service mark specimen must (1) display the mark, and (2) discuss the services in some way.  A printed copy of a directory does not demonstrate use of the mark in connection with services. Distributing the publications appears to be ancillary to the publishing activity and not a separate informational or promotional service.  Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

Pending an adequate response to the above, the examining attorney refuses registration under Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127, because the record does not show use of the proposed mark as a service mark.  TMEP §§904.11 and 1301.02 et seq.

 

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 informalities.

Recitation

 The wording “promoting the goods and services of others through the distribution of telephone directories; providing information regarding community, entertainment, educational and government activities; dissemination of advertising for others via an online communications network on the Internet ” in the recitation of services is too broad because it could include services classified in other classes.  Information is classified according to the service related subject matter.  The applicant must specifically identify the types of information it provides, and then classify its services accordingly.  The services “providing information regarding government activities” properly belongs in Class 35 if business activities.  The services “providing information regarding entertainment and education would belong in Class 41, and applicant must further clarify the subject matter.  If the information about “communities” is “travel information,” then the services belong in Class 39.

 The applicant may amend the identification to substitute the following wording, if accurate:

Promoting the goods and services of others through the distribution of telephone directories; dissemination of advertising for others via an online communications network on the Internet; providing information in the field of government affairs, in International Class 35.

Providing information in the field of entertainment (specify nature of entertainment) and education (specify, e.g., teaching high school), in International Class 41.

Providing information regarding community (specify, e.g., sporting and cultural events in International Class 41) in International Class _______  Class determined by the nature of the services.

 

The applicant is encouraged to visit the Patent and Trademark Office’s web site at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ to find examples of acceptable identifications of goods and services. 

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification

 

Additional Information

Applicant must submit samples of advertisements or promotional materials for the identified services because the nature of the services in connection with which applicant uses its mark is not clear from the present record.  If such materials are not available, then applicant must submit samples of advertisements or promotional materials for similar services.  In addition, applicant must describe in some detail the nature, purpose and channels of trade of the services listed in the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(e).

 Combined Application Requirements

 

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least several international classes, however applicant paid the fee for only one class(es).

 

Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

 

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;

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)   For each additional class of goods and/or services, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

 The specimen of record unacceptable to show service mark use.  See above.

 

Fees

If applicant submits the outstanding fees with a paper response, then applicant must submit $375 to cover the fees for the remaining class(es).  However, if applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then applicant must submit $325 to cover the fees for the remaining class(es).  Consolidated Appropriations Act, 2005, Pub. L. 108-447; 37 C.F.R. §2.6, 2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

 

 General Partners

Applicant must specify the names and national citizenship (for individuals) or the U.S. state or foreign country of incorporation of the general partners.  37 C.F.R. §2.32(a)(3)(iii); TMEP §§803.03(b) and 803.04.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

 

 

 

/Priscilla Milton/

Examining Attorney

Law Office 110

(571) 272-9199

 

 

 

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.