UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Serial Number  78/129728

 

The examining attorney has reviewed the applicant’s response to the second Office action and has determined as follows:

 

1. The refusal to register on the ground that the mark is merely descriptive as applied to the goods is withdrawn.

 

2. Registration is refused on the grounds that the mark is primarily geographically descriptive of the applicant’s goods.

 

3. The amended identification is acceptable.

 

4. The section 2(d) advisories are continued.

 

See below for explanations of numbers 2 and 4 above.

 

 

 

 

REGISTRATION REFUSED ON THE GROUNDS THAT THE MARK IS PRIMARILY GEOGRAPHICALLY DESCRIPTIVE OF THE APPLCIANT’S GOODS

 

The examining attorney refuses registration on the Principal Register because the mark is primarily geographically descriptive of the applicant’s goods.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04(b). 

 

The examining attorney has determined that the primary significance of the term “COLORADO” is geographic.  The fact that a term may have other meanings does not necessarily negate the basis for refusal.  In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986); In re Cookie Kitchen, Inc., 228 USPQ 873 (TTAB 1986).  TMEP §1210.02(b).  See dictionary definition in support of refusal.  The applicant has stated in response to an information request in the first Office action that the goods are made in Colorado, therefore, the mark is primarily geographically descriptive as applied to the goods and must be refused registration.

 

Rather than submitting arguments in response to the refusal to register, the applicant may wish to consider amending the application to seek registration on the Supplemental Register.  Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed.  37 C.F.R. §2.47(c); TMEP §815.02, 816.02 and 1102.03.  When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

 

SECTION 2(d) ADVISORIES CONTINUED

 

In the first Office action, the examining attorney issued certain Section 2(d) advisories.  In the second Office action, the examining attorney continued these advisories.  The applicant has presented no additional arguments against these advisories in its response to the second Office action.  Therefore, the advisories are continued.

 

If the applicant has questions about the status of its application, it may also call the Trademark Status Line at (703) 305-8747.

 

 

Nancy Clarke

/nancy clarke/

Trademark Examining Attorney

Law Office 102

Tel. (703) 308-9102, Ext. 212

Fax (703) 746-8102

ecom102@uspto

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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

NOTICE TO ALL APPLICANTS

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

DICTIONARY DEFINITION IN SUPPORT OF REFUSAL TO REGISTER

 

Col·o·ra·do

 
Col·o·ra·do (kòl´e-ràd¹o, -rä¹do)

Abbr. CO, Col., Colo.

A state of the west-central United States. It was admitted as the 38th state in 1876. First explored by the Spanish in the 16th and 17th centuries, the region was added to the United States through the Louisiana Purchase (1803) and a cession by Mexico (1848). The Colorado Territory was organized in 1861. Denver is the capital and the largest city. Population, 3,307,912.

— Col´o·ra¹dan adjective & noun[1]