UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/664202
APPLICANT: The Taylor Provisions Company
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: TRENTON PORK ROLL
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CORRESPONDENT’S REFERENCE/DOCKET NO: TA-65
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/664202
The assigned trademark examining attorney has reviewed the referenced application and has 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.
Registration is refused because the mark is primarily geographically descriptive of the origin of applicant’s goods and/or services. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04 et seq. The applicant seeks to register the mark TRENTON PORK ROLL for “shirts, hats, caps, helmets, jerseys, sweatshirts, windbreakers and jackets key rings, calendars, pocket diaries, stationery, envelopes, pens, pencils, rulers, ice scrapers, bumper stickers, refrigerator magnets, flags and banners, towels, pendants, beach balls, inflatable toys and book jackets.” A mark is primarily geographically descriptive when (1) the primary significance of the mark is geographic (see TMEP §1210.02); (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association (see TMEP §1210.04, et seq.); and (3) the mark identifies the geographic origin of the goods or services (see TMEP §1210.03). TMEP section 1210.01(a).
The attached evidence from The American Heritage Dictionary of the English Language shows that the primary significance of the term “TRENTON” in the mark is the name of a geographic location. Purchasers are likely to believe the goods and/or services originate or will originate in that geographic location because applicant is located there. Thus there is a presumed goods/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.
The addition of a generic or merely descriptive term to a geographic term does not 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); In re Application of Handler Fenton Westerns, Inc. 214 USPQ 848 (TTAB 1982); TMEP §1210.02(c)(ii). In this case the addition of the term PORK ROLL does not obviate this refusal.
For the record, applicant must specify where the goods and/or services originate or will originate. 37 C.F.R. §2.61(b); TMEP §1210.03.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark. Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods/services. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive. If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark. TMEP section 1213.01(b).
The applicant must disclaim the descriptive wording PORK ROLL apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The wording is merely descriptive because it merely describes a function, feature, purpose, or use of the goods/services. See Dictionary definitions and/or Global computer website extract of the relevant terms (currently attached).
Standard Disclaimer Form
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.09(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use PORK ROLL apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
Explanation of Effect
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
CLASSIFICATION
The applicant has classified the goods incorrectly. The applicant must amend the application to classify the goods in the above/below-mentioned International Classes. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
The wording in the identification of goods needs clarification because it is unacceptable as indefinite. Applicant must amend the identification of goods to specify the common commercial or generic name for the goods. If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. TMEP §1402.01. Applicant may substitute the following wording, if accurate:
The wording “WINDBREAKERS” in the identification of goods is a registered mark not owned by applicant. See enclosed copy of U.S. Registration No(s). 0941015. In its own application, an applicant may use its own registered mark in an identification of goods or services, but may not use a registered mark owned by another party. A registered mark indicates origin in one party and cannot be used to define goods or services that originate in a party other than the registrant. See Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958); TMEP §1402.09.
Therefore, applicant must amend the identification of goods by deleting the wording “wind resistant jackets” and substituting the common commercial or generic name for the goods.
Metal key rings in International Class 06;
Hand tools, namely, ice scrapers, in International Class 08;
Refrigerator magnets; Protective helmets, in International Class 09;
Pendants, in International Class 14;
Pocket Diaries, Bumper Stickers, Stationery, Book covers, Envelopes, Pens, Pencils, Calendars, Drawing rulers, in International Class 16;
Cloth flags and banners; Towels, in International Class 24;
Shirts, Hats, Caps, Jerseys, Sweatshirts, Wind Resistant Jackets And Jackets, in International Class 25;
Inflatable Toys, Beach Balls, in International Class 28. TMEP §§1402.01 and 1402.03.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html
COMBINED APPLICATIONS – 1(B)
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(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). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
/sio/
Stanley I. Osborne, Jr.
Trademark Attorney
Law Office 102
(571) 272-9205
(571) 273-9205 (fax)
HOW TO RESPOND TO THIS OFFICE ACTION:
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.
Tren·ton
Tren·ton (trèn¹ten)
1. The capital of New Jersey, in the west-central part of the state on the Delaware River northeast of Philadelphia. Settled c. 1679 by Quakers, it was the site of a pivotal battle in the American Revolution in which George Washington's troops captured a Hessian encampment in a surprise attack (December 26, 1776). Population, 88,675.[1]
pork
pork (pôrk,
pork) noun
1. The flesh of a pig or hog used as food.
2. Slang. Government funds, appointments, or benefits dispensed or enacted by politicians to gain favor with their constituents.
[Middle English, from Old French porc, pig, from Latin
porcus.][2]
roll
roll (rol) verb
rolled, roll·ing, rolls verb, intransitive
1. To move forward along a surface by revolving on an axis or by repeatedly turning over.
2. To travel or be moved on wheels or rollers: rolled down the sidewalk on their scooters.
3. To travel around; wander: roll from town to town.
4. a. To travel or be carried in a vehicle. b. To be carried on a stream: The logs rolled down the cascading river.
5. a. To start to move or operate: The press wouldn't roll. b. To work or succeed in a sustained way; gain momentum: The political campaign finally began to roll.
6. To go by; elapse: The days rolled along.
7. To recur: Summer has rolled around again.
8. To move in a periodic revolution, as a planet in its orbit.
9. To turn over and over: The puppy rolled in the mud.
10. To shift the gaze usually quickly and continually: Her eyes rolled with fright.
11. To turn around or revolve on or as if on an axis.
12. To move or advance with a rising and falling motion; undulate: The waves rolled toward shore.
13. To extend or appear to extend in gentle rises and falls: The dunes roll to the sea.
14. To move or rock from side to side: The ship pitched and rolled in heavy seas.
15. To walk with a swaying, unsteady motion.
16. To take the shape of a ball or cylinder: Yarn rolls easily.
17. To become flattened by or as if by pressure applied by a roller.
18. To make a deep, prolonged, surging sound: Thunder rolled in the distance.
19. To make a sustained, trilling sound, as certain birds do.
20. To beat a drum in a continuous series of short blows.
21. To pour or flow in or as if in a continual stream: tourists rolling into the city.
22. To enjoy ample amounts: rolled in the money.
verb, transitive
1. To cause to move forward along a surface by revolving on an axis or by repeatedly turning over.
2. To move or push along on wheels or rollers: rolled the plane out of the hangar.
3. To impel or send onward in a steady, swelling motion: The sea rolls its waves onto the sand.
4. To impart a swaying, rocking motion to: Heavy seas rolled the ship.
5. To turn around or partly turn around; rotate: rolled his head toward the door.
6. To cause to begin moving or operating: roll the cameras; roll the presses.
7. To extend or lay out: rolled out a long rope.
8. To pronounce or utter with a trill: You must roll your r's in Spanish.
9. To utter or emit in full, swelling tones.
10. To beat (a drum) with a continuous series of short blows.
11. To wrap (something) round and round upon itself or around something else: roll up a poster.
12. a. To envelop or enfold in a covering: roll dirty laundry in a sheet. b. To make by shaping into a ball or cylinder: roll a cigarette.
13. To spread, compress, or flatten by applying pressure with a roller: roll pastry dough.
14. Printing. To apply ink to (type) with a roller or rollers.
15. Games. To throw (dice), as in craps.
16. Slang. To rob (a drunken, sleeping, or otherwise helpless person).
noun
1. The act or an instance of rolling.
2. Something rolled up: a roll of tape.
3. A quantity, as of cloth or wallpaper, rolled into a cylinder and often considered as a unit of measure.
4. A piece of parchment or paper that may be or is rolled up; a scroll.
5. A register or a catalogue.
6. A list of names of persons belonging to a group.
7. A mass in cylindrical or rounded form: a roll of tobacco.
8. a. A small rounded portion of bread. b. A portion of food shaped like a tube with a filling.
9. A rolling, swaying, or rocking motion.
10. A gentle swell or undulation of a surface: the roll of the plains.
11. A deep reverberation or rumble: the roll of thunder.
12. A rapid succession of short sounds: the roll of a drum.
13. A trill: the roll of his r's.
14. A resonant, rhythmical flow of words.
15. A roller, especially a cylinder on which to roll something up or with which to flatten something.
16. A maneuver in which an airplane makes a single complete rotation about its longitudinal axis without changing direction or losing altitude.
17. Slang. Money, especially a wad of paper money.
— phrasal verb.[3]
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[2]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[3]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.