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.

 

Serial Number  78/694644

 

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

SECTION 2(E)(1) REFUSAL

 Registration is refused because the proposed mark merely describes the subject matter and theme of the applicant’s goods and services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

ROME is defined as:

 

 1.   The capital and largest city of Italy, in the west-central part of the country on the Tiber River. Traditionally founded by Romulus and Remus, it was ruled first by Etruscans, who were overthrown c. 500 B.C. The Roman Republic gradually extended its territory and expanded its influence, giving way to the Roman Empire during the reign of Augustus (27 B.C.-A.D. 14). As capital of the empire, Rome was considered the center of the known world, but the city declined when Constantine transferred his capital to Byzantium (323). Alaric I conquered the city in 410, leading to a lengthy period of devastation by barbarian tribes. In the Middle Ages the city revived as the spiritual and temporal power of the papacy increased. During the 1800's Rome was held at various times by the French until it became the capital of Italy in 1871. Vatican City remains an independent enclave within the confines of Rome. Population, 2,830,569.[1][1]

The proposed mark is merely descriptive of the subject matter and theme of the applicant’s goods and services, which relate to a story set in Rome.  See the attachment ABOUTSHOW showing information about the show from the applicant’s website.  http://www.hbo.com/rome/about/.  See In re MBNA America Bank, N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003), reh'g denied, 2004 U.S. App. LEXIS 2187 (Fed. Cir. Jan. 12, 2004) (MONTANA SERIES and PHILADELPHIA SERIES are merely descriptive of "credit card services featuring credit cards depicting scenes or subject matter of, or relating to" the places named in the marks); In re Busch Entertainment Corp., 60 USPQ2d 1130 (TTAB 2000) (EGYPT merely descriptive of subject matter or motif of amusement park services); TMEP Section 1210.02 (b)(iii).

Applicant should note the following additional ground for refusal.

SECTION 2(E)(2) REFUSAL

Registration is also 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.

The primary significance of the term “ROME” is geographic, and applicant’s services come from the geographical place named in the mark.  Therefore, a public association of the services with the place is presumed.  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(b).  See attachment ROMELOC, which notes that the series which is broadcast and streamed through the applicant’s services is shot in ROME.  http://www.unrv.com/hbo-rome-series.php.

 

Although an amendment to the Supplemental Register would normally be an appropriate response to these refusals, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§815.02, 816.02 and 1102.03.

 

If applicant files an amendment to allege use and also amends to the Supplemental Register, please note that the effective filing date of the application will then be the date of filing of the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

REQUEST FOR INFORMATION

Applicant must state whether any aspect of the services will be rendered in, or will have any other connection with, the geographic location named in the mark.  37 C.F.R. §2.61(b); TMEP §1210.03.  If the primary significance of a mark is to indicate a geographic location which is neither obscure nor remote and applicant’s services are performed, at least in part, in the location indicated, then the public is likely to believe that the geographic term identifies the place from which the services originate.  In re Chalk’s International Airlines, Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988); TMEP §1210.04(b).

Furthermore in order to allow for proper examination of this application, the applicant must submit samples of advertisements or promotional materials for the goods or services or, if unavailable, for goods or services of the same type.  If such materials on the specific goods/services described in the application are not available, the applicant must describe the nature, purpose, prospective purchasers, and channels of trade of the goods or services identified in the application.

This information is necessary to evaluate accurately and fully the registrability of the applicant’s proposed designation. 37 C.F.R. Section 2.61(b); TMEP sections 1103.04 and 1105.02.  If the applicant does not provide the information required herein, registration may be refused.  The Trademark Rules of Practice have the effect of law and failure to comply with a request for information is grounds for refusal of registration.  See, e.g., In re Joseph Edward Page, 1999 TTAB LEXIS 229 (TTAB 1999); In re Babies Beat, Inc., 13 USPQ2d 1729 (TTAB 1990); In re Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products and Chemicals, Inc., 192 USPQ2d 84, 85-86 (TTAB 1976); and In re Morrison Industries, Inc., 178 USPQ 432, 433-34 (TTAB 1973).   

Lastly, the applicant must indicate whether the mark has any significance in the relevant trade or industry or as applied to the goods or services.  37 C.F.R. Section 2.61(b). 

IDENTIFICATION OF GOODS AND SERVICES

In the class 9 identification, the applicant must specify the subject matter of the “pre-recorded audiotapes, videotapes, compact discs, dvd's and multimedia software recorded on CD-ROM”. 

The applicant must clarify the wording “images held in electronic format, pre-recorded video clips, pre-recorded audio clips, animated ringers, video ringers, audio shorts, video shorts, animated screensavers”.  The applicant should specify the subject matter of the images, video clips, audio clips, audio shorts, and video shorts.  Furthermore the applicant must indicate how these items are stores, i.e. Recorded on magnetic media. 

Lastly, the applicant should amend the wording “featuring content from or relating to Applicant's dramatic television series of the same name” to read “featuring content from or relating to an ongoing dramatic television series about Rome.  The amendment is necessary for the present identification does not sufficiently identify the subject matter of the goods.

The class 41 recitation is acceptable as written.

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.

 

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.

 

GENERAL INFORMATION

 

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. Section 1052(d).  TMEP section 704.02.

 

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

 

 

 

/Karen K. Bush/

Trademark Examining Attorney

Law Office 105

571-272-9136

 

 

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.