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. 

 

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.

 

 

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

 

 

Search Results

 

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

 

 

2(e)(2) - Geographically Descriptive Refusal

 

Registration is refused because the proposed 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.

 

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 is a generally known 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. 

 

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

 

The attached evidence from the Columbia Gazetteer shows that the primary significance of the term “Oyster Bay” in the mark is the name of a geographic location.  Purchasers are likely to believe the goods originate in that geographic location because applicant’s goods appear to come from Oyster Bay, the geographic place named in the proposed mark.  Applicant is located in New Hyde Park, which is a village on Long Island, in very close proximity to Oyster Bay.  Further, that geographic location is not remote or obscure, nor does the term have any other significant non-geographic meaning.  Therefore, a public association of the goods with the place is presumed.  See In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).  Thus there is a presumed goods-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.

 

Since the mark OYSTER BAY is geographically descriptive of the source of the goods, registration is refused.

 

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).

 

 

Classification

 

The goods are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 29.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

 

/Heather D. Thompson/

Trademark Examining Attorney

Law Office 109

571.272.9287

heather.thompson1@uspto.gov

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.