| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77440274 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re application of : Hilasal USA, Inc.
Serial No. : 77/440274
Filed : April 4, 2008
Mark : SOHO
Trademark Attorney : Ronald E.Aikens
Our File No. : 8968.3711
OFFICE ACTION RESPONSE
Dear Sir: This is in response to the Office Action dated July 22, 2008 in connection with the above referenced Application. GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE
The Applicant respectfully requests reconsideration of the Examining Attorney's refusal to register the Applicant's mark under Trademark Act Sections 2(a) and (e)(3), 15 U.S.C.§1052(a), (e)(3), on the basis that the Examining Attorney believes that the mark is geographically deceptive and primarily geographically deceptively misdescriptive. It is the Applicant's contention that the mark is neither geographically deceptive nor primarily geographically deceptively misdescriptive, but rather the mark is an arbitrary or fanciful mark, which should be registered on the Principal register. To support a refusal of registration on the ground that a geographic term is deceptive under §2(a), the Examining Attorney must show that: (1) the primary significance of the mark is a generally known geographic location; (2) the goods or services do not originate in the place named in the mark; (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark; and; (4) the misrepresentation is a material factor in the consumer's decision to buy the goods or use the services. Institute National des Appellations D'Origine v. Vintners Int'l Co., Inc. 958 F.2d 1574, 1580, 22 USPQ2D 1190, 1195 (Fed. Cir. 1992); In reCalifornia Innovactions, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003).
I. PRIMARY SIGNIFICANCE OF TERM IS NOT A GENERALLY KNOWN GEOGRAPHIC AREAThe Examining Attorney argues that the primary significance of the term "SOHO" is geographic and provides dictionary definitions to support his position. The word "primarily" in Section 2(e) (3) shows the intent of the federal statute is not to refuse registration of a mark where the geographic meaning is minor, obscure, remote or unconnected with the goods. A mark that is comprised of geographic elements may for example indicate that a product is stylish or of high quality (HYDE PARK and NANTUCKET for clothes and FIFTH AVENUE for cars); that the geographic location may be arbitrary or fanciful DUTCH BOY for paint) or connote important characteristics of the climate or region (ANTARCTICA); See Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc. 93 U.S.P.Q. 250 (S.D.N.Y. 1951). Therefore, the Examining Attorney must consider all possible connotations that the composite mark in its entirety may have and whether the primary significance of the composite mark is unconnected with the goods. For example in In re Dixie Insurance Co., 223 USPQ 514, 516 (TTAB 1984) the Trademark Trial and Appeal Board found numerous connotations for DIXIE other than its geographical meaning. The court concluded that its primary significance was not geographic and further was unconnected with Applicant's services and therefore granted the Applicant a trademark registration. If the geographic meaning of the term is minor, obscure or remote or unconnected with the goods, the mark is treated as an arbitrary one and registration is permitted on the Principal Register. This is because purchasers would not upon seeing the mark, conclude that it imparts information about the geographical origin of the goods. In re Sharky's Drygoods Co. 23 U.S.P.Q.2d 1061 (TTAB 1992). In the instant case the term SOHO has become, like HYDE PARK, NANTUCKET, AND FIFTH AVENUE, a term that means stylish or of high quality rather than merely a geographic location. This is because SOHO has in the past ten years become a highly affluent area featuring expensive restaurants, hotels and shops. (See attached internet Evidence, Exhibits A, B, C, and D).
II. GOODS/PLACE ASSOCIATIONIn addition to showing that the composite mark is primarily geographical, the Examining Attorney must also prove that the public is likely to believe that the goods originate in the place identified in the mark. TMEP 1210.04. Additionally, the Trademark Statute reflects the common law principle that a geographic term used in a fictitious, arbitrary or fanciful manner is protectable like any other non-descriptive term. In re Loews Theatres Inc.769 F.2d 764, 768 (Fed. Cir. 1985). Therefore, if there is a genuine issue as to whether or not the composite mark's primary meaning is geographic, the Examining Attorney must provide evidence to establish an association between the goods or services and the place named in the composite mark. TMEP 1210.04(b) citing In re John Harvey & Sons Ltd, 32 USPQ2d 1451 (TTAB 1994). The Examining Attorney needs to prove more than simply that the goods are manufactured, sold or marketed in that geographic place. The Examining Attorney must also prove that the public upon viewing the mark would likely think of the geographic place in the mark, for example the public would likely think of FRANCE for perfumes, DENMARK for cheese and SWITZERLAND for watches. In re Application of Danish Maid Cultured Products, Inc. 156 USPQ 430 (TTAB 1967). There are numerous cases in which the Trademark Trial and Appeal Board has found no association between the goods of the character sold by the applicant and the geographical term in a mark. See In re Yardley of London, Inc. 165 U.S.P.Q. 272 (TTAB 1970)(no association found between LONDON and waterproof mascara); In re John Harvey & Sons Ltd., 32 U.S.P.Q.2d 1451 (TTAB 1994)(no association between BRISTOL and sherry cakes); In re Circus Ices, Inc. 158 U.S.P.Q. 64 (TTAB 1968)(no association found between HAWAII and frozen ices); In re Gale Hayman, Inc. 15 U.S.P.Q.2d 1478 (TTAB 1990) (no association between SUNSET BOULEVARD and perfume). A. Examiner's Evidence. In the present Office Action the Examining Attorney argues that the mark SOHO "gives the impression that the goods come from New York or London". The Examining Attorney has offered dictionary evidence to support his position that towels are associated with New York and London. In regards to the definitions that the Examining Attorney cites, the Applicant maintains that these definitions merely demonstrate that the term SOHO has more than one common interpretation, namely an area in New York or London. In the past twenty years, however, the interpretation of this term has changed to mean stylish and high quality. The term is no longer simply associated with a particular geographic are and has never been associated with towels. B. No Goods/Place AssociationThe Applicant contends that purchasers are not likely upon encountering the Applicant's towels to assume that they are of New York or London origin where, the mark SOHO's primary connotation is not geographical, together with the fact that towels are not commonly associated with New York or London. While the Applicant sells towels in New York, and through out the rest of the country, the public does not associate towels with New York or London. The Applicant maintains the position that SOHO is registerable because the mark's primary significance is not geographical and the public would not likely associate the Applicant's products with New York or London. The term "SOHO" in the mark SOHO is used in an arbitrary manner to suggest stylish or high quality. The public upon viewing the composite mark denoting upscale products would not likely think of towels. This is similar to the idea that AMERICAN GIRLS is arbitrary and can apply to any goods; whereas AMERICAN SHOES would be descriptive of shoes. Similarly, SOHO is arbitrary and can apply to any goods. C. Third Party RegistrationsAdditionally, the Applicant has offered evidence of trademark registrations on the principal register, which are comprised of the term "SOHO" for various goods. This evidence is offered to support the Applicant's position that the Trademark Office recognizes that marks using the term "SOHO" are arbitrary marks, which are not geographically descriptive and are entitled to trademark registration. (See attached Registrations, Exhibit E.) III. CONCLUSION In conclusion, the Applicant believes that the Examining Attorney has failed to their burden of proving that the primary significance of the mark is geographical and that the public would likely associate towels with New York or London. The Applicant maintains that the composite mark SOHO is an arbitrary mark and the public would not associate this mark with towels; and therefore, this mark is entitled to trademark registration. Where the Examining Attorney's and the Applicant's evidence balance, all doubts are resolved in favor of the applicant. In re Societe Generale de Eaux Minerales de Vittel, S.A., 3 USPQ2d 1450 (Fed. Cir. 1987). Applicant has completely responded to the Office Action dated March 11, 2003. Accordingly, Applicant requests favorable action passing its mark to publication. If there are any additional charges, including extension of time, please bill our Deposit Account No. 13-1130.
Respectfully submitted,
I:8968|AMEND|3711.Jan.09 |
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
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| DESCRIPTION OF EVIDENCE FILE | internet evidence and trademark registrations |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /catherine ferguson/ |
| SIGNATORY'S NAME | Catherine Ferguson |
| SIGNATORY'S POSITION | Attorney for Applicant [member of FL Bar] |
| DATE SIGNED | 01/21/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jan 21 11:27:46 EST 2009 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0090121112746671917-77440 274-44081a7eb56bcc990c3cd fc20da68849313-N/A-N/A-20 090121111602971355 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re application of : Hilasal USA, Inc.
Serial No. : 77/440274
Filed : April 4, 2008
Mark : SOHO
Trademark Attorney : Ronald E.Aikens
Our File No. : 8968.3711
OFFICE ACTION RESPONSE
Dear Sir:
This is in response to the Office Action dated July 22, 2008 in connection with the above referenced Application.
The Applicant respectfully requests reconsideration of the Examining Attorney's refusal to register the Applicant's mark under Trademark Act Sections 2(a) and (e)(3), 15 U.S.C.§1052(a), (e)(3), on the basis that the Examining Attorney believes that the mark is geographically deceptive and primarily geographically deceptively misdescriptive. It is the Applicant's contention that the mark is neither geographically deceptive nor primarily geographically deceptively misdescriptive, but rather the mark is an arbitrary or fanciful mark, which should be registered on the Principal register.
To support a refusal of registration on the ground that a geographic term is deceptive under §2(a), the Examining Attorney must show that:
(1) the primary significance of the mark is a generally known geographic location;
(2) the goods or services do not originate in the place named in the mark;
(3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark;
and;
(4) the misrepresentation is a material factor in the consumer's decision to buy the goods or use the services.
Institute National des Appellations D'Origine v. Vintners Int'l Co., Inc. 958 F.2d 1574, 1580, 22 USPQ2D 1190, 1195 (Fed. Cir. 1992); In reCalifornia Innovactions, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003).
The Examining Attorney argues that the primary significance of the term "SOHO" is geographic and provides dictionary definitions to support his position.
The word "primarily" in Section 2(e) (3) shows the intent of the federal statute is not to refuse registration of a mark where the geographic meaning is minor, obscure, remote or unconnected with the goods. A mark that is comprised of geographic elements may for example indicate that a product is stylish or of high quality (HYDE PARK and NANTUCKET for clothes and FIFTH AVENUE for cars); that the geographic location may be arbitrary or fanciful DUTCH BOY for paint) or connote important characteristics of the climate or region (ANTARCTICA); See Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc. 93 U.S.P.Q. 250 (S.D.N.Y. 1951).
Therefore, the Examining Attorney must consider all possible connotations that the composite mark in its entirety may have and whether the primary significance of the composite mark is unconnected with the goods. For example in In re Dixie Insurance Co., 223 USPQ 514, 516 (TTAB 1984) the Trademark Trial and Appeal Board found numerous connotations for DIXIE other than its geographical meaning. The court concluded that its primary significance was not geographic and further was unconnected with Applicant's services and therefore granted the Applicant a trademark registration.
If the geographic meaning of the term is minor, obscure or remote or unconnected with the goods, the mark is treated as an arbitrary one and registration is permitted on the Principal Register. This is because purchasers would not upon seeing the mark, conclude that it imparts information about the geographical origin of the goods. In re Sharky's Drygoods Co. 23 U.S.P.Q.2d 1061 (TTAB 1992). In the instant case the term SOHO has become, like HYDE PARK, NANTUCKET, AND FIFTH AVENUE, a term that means stylish or of high quality rather than merely a geographic location. This is because SOHO has in the past ten years become a highly affluent area featuring expensive restaurants, hotels and shops. (See attached internet Evidence, Exhibits A, B, C, and D).
In addition to showing that the composite mark is primarily geographical, the Examining Attorney must also prove that the public is likely to believe that the goods originate in the place identified in the mark. TMEP 1210.04. Additionally, the Trademark Statute reflects the common law principle that a geographic term used in a fictitious, arbitrary or fanciful manner is protectable like any other non-descriptive term. In re Loews Theatres Inc.769 F.2d 764, 768 (Fed. Cir. 1985). Therefore, if there is a genuine issue as to whether or not the composite mark's primary meaning is geographic, the Examining Attorney must provide evidence to establish an association between the goods or services and the place named in the composite mark. TMEP 1210.04(b) citing In re John Harvey & Sons Ltd, 32 USPQ2d 1451 (TTAB 1994).
The Examining Attorney needs to prove more than simply that the goods are manufactured, sold or marketed in that geographic place. The Examining Attorney must also prove that the public upon viewing the mark would likely think of the geographic place in the mark, for example the public would likely think of FRANCE for perfumes, DENMARK for cheese and SWITZERLAND for watches. In re Application of Danish Maid Cultured Products, Inc. 156 USPQ 430 (TTAB 1967).
There are numerous cases in which the Trademark Trial and Appeal Board has found no association between the goods of the character sold by the applicant and the geographical term in a mark. See In re Yardley of London, Inc. 165 U.S.P.Q. 272 (TTAB 1970)(no association found between LONDON and waterproof mascara); In re John Harvey & Sons Ltd., 32 U.S.P.Q.2d 1451 (TTAB 1994)(no association between BRISTOL and sherry cakes); In re Circus Ices, Inc. 158 U.S.P.Q. 64 (TTAB 1968)(no association found between HAWAII and frozen ices); In re Gale Hayman, Inc. 15 U.S.P.Q.2d 1478 (TTAB 1990) (no association between SUNSET BOULEVARD and perfume).
A. Examiner's Evidence.
In the present Office Action the Examining Attorney argues that the mark SOHO "gives the impression that the goods come from New York or London". The Examining Attorney has offered dictionary evidence to support his position that towels are associated with New York and London. In regards to the definitions that the Examining Attorney cites, the Applicant maintains that these definitions merely demonstrate that the term SOHO has more than one common interpretation, namely an area in New York or London. In the past twenty years, however, the interpretation of this term has changed to mean stylish and high quality. The term is no longer simply associated with a particular geographic are and has never been associated with towels.
The Applicant contends that purchasers are not likely upon encountering the Applicant's towels to assume that they are of New York or London origin where, the mark SOHO's primary connotation is not geographical, together with the fact that towels are not commonly associated with New York or London. While the Applicant sells towels in New York, and through out the rest of the country, the public does not associate towels with New York or London.
The Applicant maintains the position that SOHO is registerable because the mark's primary significance is not geographical and the public would not likely associate the Applicant's products with New York or London. The term "SOHO" in the mark SOHO is used in an arbitrary manner to suggest stylish or high quality. The public upon viewing the composite mark denoting upscale products would not likely think of towels. This is similar to the idea that AMERICAN GIRLS is arbitrary and can apply to any goods; whereas AMERICAN SHOES would be descriptive of shoes. Similarly, SOHO is arbitrary and can apply to any goods.
Additionally, the Applicant has offered evidence of trademark registrations on the principal register, which are comprised of the term "SOHO" for various goods. This evidence is offered to support the Applicant's position that the Trademark Office recognizes that marks using the term "SOHO" are arbitrary marks, which are not geographically descriptive and are entitled to trademark registration. (See attached Registrations, Exhibit E.)
III. CONCLUSION
In conclusion, the Applicant believes that the Examining Attorney has failed to their burden of proving that the primary significance of the mark is geographical and that the public would likely associate towels with New York or London. The Applicant maintains that the composite mark SOHO is an arbitrary mark and the public would not associate this mark with towels; and therefore, this mark is entitled to trademark registration. Where the Examining Attorney's and the Applicant's evidence balance, all doubts are resolved in favor of the applicant. In re Societe Generale de Eaux Minerales de Vittel, S.A., 3 USPQ2d 1450 (Fed. Cir. 1987).
Applicant has completely responded to the Office Action dated March 11, 2003. Accordingly, Applicant requests favorable action passing its mark to publication.
If there are any additional charges, including extension of time, please bill our Deposit Account No. 13-1130.
Respectfully submitted,
I:8968|AMEND|3711.Jan.09
