UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 6/12/2013

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

However, the applicant must address the following issues detailed below:

 

• Geographically descriptive refusal; and
• Ownership claim.

 

 

SECTION 2(e)(2) REFUSAL – Geographically Descriptive

Registration is refused because the applied-for 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); see TMEP §§1210, 1210.01(a).

 

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 services for which applicant seeks registration originate in the geographic place identified in the mark; and

 

(3)       Purchasers would be likely to make a services-place association; that is, purchasers would be likely to believe that the 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).

 

Here, applicant’s mark is “CLEVELAND’S CASINO” for gambling services.  Attached evidence shows that Cleveland is a city in Ohio, and the application indicates that applicant is located in Cleveland, Ohio.  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 services with the place is presumed if an applicant’s 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).

 

Because applicant is located in Cleveland, purchasers are likely to make a services-place association. 

 

The addition of generic or highly descriptive wording, such as “CASINO” in the instant application, to a geographic word or term does not diminish that geographic word or term’s primary geographic significance.  TMEP §1210.02(c)(ii); see, e.g., In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (holding MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998) (holding CAROLINA APPAREL primarily geographically descriptive of retail clothing store services); In re Chalk’s Int’l Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (holding PARADISE ISLAND AIRLINES primarily geographically descriptive of the transportation of passengers and goods by air).

 

“CLEVELAND’S CASINO” merely indicates that applicant is providing casino services in Cleveland.  Accordingly, the mark is refused registration as being primarily geographically descriptive. 

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

            Supplemental Register Suggested

 

 

Should applicant use the proposed mark in commerce and file an amendment to allege use, applicant may then respond to this refusal by amending the application to seek registration on the Supplemental Register.  Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.  Note that applicant’s proposed mark 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.  Please also note that amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal.

 

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.

 

To amend to the Supplemental Register, applicant need only provide a request to do so.

 

Although Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

 

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act, 15 U.S.C. §1052(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

 

Applicant is advised that, if the application is amended to seek registration on the Principal Register under Trademark Act Section 2(f) or on the Supplemental Register, applicant must disclaim “CASINO” because such wording appears to be generic in the context of applicant’s goods and/or services.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766 (TTAB 1986); TMEP §1213.03(b).

 

The following is the standardized format for a disclaimer:

 

No claim is made to the exclusive right to use “CASINO” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

 

 

 

Requirement – Ownership Claim

 

 

If applicant owns U.S. Registration No. 4319288, then applicant must submit for the application record a claim of ownership of this registration.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copy of the registration.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of the registration:

 

Applicant is the owner of U.S. Registration No. 4319288.

 

 

 

Response Guidelines

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.

 

If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number or email address below.  Applicant is encouraged to contact the examining attorney via email or telephone to make required changes to the application through an examiner’s amendment.

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

 

 

 

 

 

 

/Andrea Hack/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Law Office 108

571-272-5413 (ph.)

andrea.hack@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/12/2013 FOR U.S. APPLICATION SERIAL NO. 85861687

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/12/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.