UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/066670
MARK: MADRID
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: COMUNIDAD DE MADRID; VICEPRESIDENCIA PRI ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
INTERNATIONAL REGISTRATION NO. 0997154.
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and
(2) Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).
37 C.F.R. §§11.1, 11.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. TMEP §602.06(b). Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. See TMEP §§602.03, 712.03.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of the Marks
In this case, the literal portion of applicant’s mark, MADRID, is identical to the registrants’ marks. Further, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element itself and not in any particular display. TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a). Thus, a mark presented in stylized characters or otherwise in special form will not generally avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display. See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). Thus, registrants’ marks could appear identical to applicant’s mark. Therefore, the marks create the same overall commercial impressions.
If the marks of the respective parties are identical, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).
Comparison of the Goods
In this case, applicant’s goods, namely, “Leather and imitation leather and goods made of these materials and not included in other classes, animal skins and hides, bags, trunks and suitcases, umbrellas, parasols and walking sticks, whips, harnesses and saddlery.,” in Class 18, “Ready-made clothing for women, men or children and footwear (except orthopaedic footwear), headwear,” in Class 25, and “Games and toys, dolls, playing cards, gymnastic and sporting articles not included in other classes, Christmas tree decorations.,” in Class 28 are identified broadly. Therefore, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers. See TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986). Thus, it is presumed that applicant’s identification is broad enough to include the registrants’ exact goods, namely, “Sporting goods, namely skateboards, skateboard trucks and wheels, sandpaper covered adhesive-backed sheets for affixing to the upper surface of skateboards and skateboard decks,” (Reg. No. 2909515), “Luggage,” (Reg. No. 3042668), and “Footwear, namely shoes for use with skateboards,” (Reg. No. 3241061) and that the goods travel through the same channels of trade to the same types of consumers.
Given the similarity of the marks and the goods, prospective customers are likely to confuse the source of the respective goods. Accordingly, registration of applicant’s mark is properly refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Applicant should note the following additional ground for refusal.
Section 2(e)(2)- Geographically Descriptive Refusal
A mark is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the mark is a generally known geographic place or location;
(2) The goods and/or services for which applicant seeks registration originate in the geographic place identified in the mark; and
(3) Purchasers would be likely to make a goods-place or services-place association; that is, purchasers would be likely to believe that the goods and/or services originate in the geographic place identified in the mark.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305, 1309 (TTAB 2006).
The attached evidence shows that the primary significance of the word MADRID is a generally known geographic place. Further, the record indicates that applicant is located in Madrid, and therefore its goods and services originate there. When there is no genuine issue that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods and/or services with the place is presumed if an applicant’s goods and/or services originate in the place named in the mark. TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1706 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN primarily geographically descriptive of restaurant services rendered in California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 849-50 (TTAB 1982) (holding DENVER WESTERNS primarily geographically descriptive of western-style shirts originating in Denver).
Thus, the evidence of record shows that the primary significance of applicant’s mark is geographic, that the goods and services originate from the geographic place identified in the mark, and that a goods/services-place association can be presumed. Therefore, registration is properly refused under Section 2(e)(2) of the Trademark Act.
Identification of Goods and Services
Therefore, applicant must amend the goods and/or services to specify the common commercial or generic name for each product or service.
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.
Further guidance and suggestions are given below in bold and brackets.
Applicant may adopt the following, if accurate:
“Bleaching preparations for laundry use and other substances for laundry use namely, [list specific items by common commercial or generic name, e.g., detergent cleaning polishing, scouring and abrasive preparations; soaps for [indicate area of use, e.g., cosmetic use, laundry use]; perfumery, essential oils, cosmetics, hair lotions; dentifrices,” in International Class 3.
“Scientific, nautical, surveying, photographic, cinematographic, weighing, measuring, checking, life-saving and teaching apparatus and instruments, namely, [specify by common commercial name, e.g., scales, Bunsen burners for laboratory use, graduated rulers, etc.]; apparatus and instruments for conducting, switching, transforming, accumulating, regulating, and sending of electricity, namely, [specify by common commercial name, e.g., electrical conductors, electric switches, electric transformers, electric accumulators, voltage regulators for electric power, electric cables, etc.]; apparatus for recording, transmitting and reproduction of sound or images; [indicate whether blank or prerecorded] magnetic data carriers [if prerecorded, indicate subject matter], [indicate type of disc, e.g., compact, digital video] recording discs featuring [indicate subject matter]; automatic vending machines and mechanisms for coin-operated apparatus, namely [indicate type of mechanism or common commercial name]; cash registers, calculating machines, data processing equipment and computers; fire extinguishers,” in International Class 9.
“Precious metals and their alloys; goods made of precious metal or plated therewith, namely, [specify by common commercial name, e.g., boxes of precious metals, figurines of precious metals]; jewellery; precious stones; horological and chronometric instruments,” in International Class 14.
“Paper, cardboard and goods made from these materials, included in this class, namely, [indicate common commercial name and specific paper and cardboard goods, e.g., coasters of paper, cardboard tubes]; printed matter, namely, newspapers, magazines and books in the field of [specify area of use or subject matter]; bookbinding material, namely, [indicate specific items, e.g., bookbindings, bookbinding tape]; photographs; stationery; adhesives for stationery or household purposes; artists' materials, namely [indicate specific items, e.g., artists’ brushes, artists’ pens]; paint brushes; typewriters and office requisites except furniture, namely, [indicate specific items, e.g., office labeling machines, staplers, rubber bands]; printed instructional and teaching material except apparatus in the field of [indicate subject matter]; plastic materials for packaging, namely, [indicate specific goods, e.g., plastic bubble packs for wrapping or packaging],” in International Class 16.
“Leather and imitation leather; goods made of leather and imitation leather, namely, [specify specific goods, e.g., leather cases, imitation leather purses]; animal skins and hides; bags, namely, [specify by common commercial name, e.g., bags for sports, messenger bags]; trunks and suitcases; umbrellas, parasols and walking sticks, whips, harnesses and saddlery,” in International Class 18.
“Ready-made clothing for women, men and children, namely, [specify by common commercial name, e.g., shirts, pants, etc.]; footwear except orthopaedic footwear; headwear,” in International Class 25.
“Games and toys, namely, dolls, playing cards; gymnastic and sporting articles not included in other classes, namely, [specify goods by common commercial name, e.g., gymnastic apparatus, soccer balls, snowboards],” in International Class 28.
“Wine and spirits; other alcoholic beverages except beer, namely, [specify by common commercial name, e.g., rum, vodka],” in International Class 33.
“Advertising services; services for assistance with the running or management of commercial or industrial companies, namely, [specify by common commercial name, e.g., assistance with business management and planning]; business administration and office work; import-export agencies; retail and wholesale sales services, and sales services via global computer networks in the fields of [specify field, e.g., clothing, jewelry]; exclusive sales and commercial representation, namely, independent sales representatives in the field of [specify field, e.g., food, carpet],” in International Class 35.
“Insurance services, namely, [specify services, e.g., insurance agency and brokerage]; financial, monetary and banking affairs, namely, [specify by common commercial name, e.g., banking services, financial advice, monetary exchange]; real estate affairs, namely, [specify services, e.g., real estate agencies, real estate brokerage],” in International Class 36.
“Telecommunications services, namely, [specify services, e.g., local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable, and satellite transmissions, transmission of voice, data, graphics, sound and video by means of broadband power line or wireless networks],” in International Class 38.
“Services for the transport, packaging for transport purposes, and storage of goods; distribution of goods, namely, delivery of [indicate field or type of goods, e.g. clothing, automotive parts, cosmetics]; travel arrangement,” in International Class 39.
Education services, namely, providing [indicate form of educational activity, e.g., classes, seminars, workshops] in the field of [indicate subject matter or field of educational activity]; training services in the field of [indicate field or subject matter}, animal training, etc.]; entertainment services in the nature of [indicate specific event or act, and field, e.g. a live musical group, television comedy series, ethnic festival, etc.]; sporting and cultural activities, namely, [specify by common commercial name, e.g., organizing community sporting and cultural events, operation of sports camps, etc.],” in International Class 41.
“Scientific and technological services and research and design relating thereto in the field of [specify field]; services of industrial analysis and scientific analysis and research services for medical purposes, namely, [specify by common commercial name, e.g., scientific and industrial research in the field of medicine]; design and development of computer hardware and software; services provided by persons, individually or collectively, in connection with theoretical or practical aspects of complex activity sectors, namely, [specify services by common commercial name, e.g., scientific research] provided by professionals in the fields of chemistry, physics, computer engineering; engineering services and research, namely, providing evaluations, estimates, research and reports in the fields of science and technology, in International Class 42.
“Food and drink services, namely, [specify by common commercial name, e.g., serving of food and drinks]; services provided by persons or establishments aiming to prepare food and drink for consumption, namely, [specify by common commercial name, e.g., restaurant services]; services for providing accommodation, room and board in hotels, guest houses and other temporary accommodation establishments, namely, [specify by common commercial name, e.g., providing temporary accommodations]; booking of temporary accommodation; lodging services for animals,” in International Class 43.
“Medical care services; veterinary services; medical analyses provided in connection with patient treatment; pharmacy consulting services, namely, medical evaluation services, namely, functional assessment program for patients receiving medical rehabilitation services for purposes of guiding treatment and assessing program effectiveness; body hygiene or beauty services for persons or animals provided by individuals or establishments, namely, [specify by common commercial name, e.g., beauty salon services, animal grooming services]; animal breeding services; services related with the agriculture, horticulture and forestry sectors, namely, [specify by common commercial name, e.g., pest control services for agriculture, horticulture or forestry]; services related with plant cultivation, namely, landscape gardening; services related with floral art, namely, flower arranging; services provided by landscape gardeners, namely, landscape gardening design for others” in International Class 44.
“Personal and social services, not included in other classes, provided by third parties to address the needs of individuals, namely, [specify by common commercial name, e.g., adoption agencies, bodyguard services]; security services for the protection of property and individuals, namely, [specify by common commercial name, e.g., security guard services]; legal services; investigation and surveillance services for the security of persons and communities; marriage bureau services; undertaking services,” in International Class 45.
Thus, applicant can only amend the identification to include goods and/or services that are (1) within the scope of the identification in the application as filed, and (2) classified in an international class designated in the application as filed.
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. See TMEP §1402.04.
Drawing
If applicant submits a new drawing in the form of a digitized image, it must be in .jpg format. The Office recommends that the digitized image have a length and width no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); TMEP §807.05(c).
Amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.
Mark Description
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of the wording MADRID with [specify design elements] appearing in the letter “M.”
Response Guidelines
If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.
/Matt Einstein/
Matt Einstein
Trademark Examining Attorney
Law Office 115
Phone: (571) 272-8251
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.