Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85882969 NORTH BEACH(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85882969) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examiner has refused registration of the mark NORTH BEACH on the basis that it is a neighborhood in San Francisco, California, that Applicant is located 70 miles away in St. Helena, California, and therefore consumers will somehow believe that the wine comes from North Beach. This is a ridiculous conclusion that has absolutely no support in logic. The Examiner has relied on the case of In re Spirits of Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007), where the Board found geographic descriptiveness of the term YOSEMITE and in one line of its opinion noted that Merced was located within 80 miles of Yosemite National Park. This was not intended by the Board to serve as a means for the Office to get out Google maps and measure the distance between two places (the place identified and the location of the Applicant) to determine geographic descriptiveness. That would be incredibly simplistic and cause an absurd result. In looking at the In re Spirits of Merced opinion, one must recognize the facts of that case. As a town, Merced serves as a jumping off point to Yosemite National Park as one of the largest cities outside of the park. Being a National Park, Yosemite serves as a symbol for the surrounding area and drives the economy of the surrounding area as a result of tourism. Similarly, in In Re Joint Stock Co."Baik," 80 USPQ2d 1305, 1310-11 (TTAB 2006), the other case cited by the Examiner, the fact that the product was vodka, which is made using water, is equally if not more important to the resulting decision than the fact that the Applicant happened to be located "near" the lake identified by the mark. Since vodka is made using water there was a likelihood that consumers would conclude that the vodka was made from the water from the lake identified by the mark. A simple bit of additional research by the Examiner would have disclosed that North Beach has neither vineyards nor wineries and the only connection between North Beach and wine is that there are restaurants located there that serve it. Consumers seeing the mark NORTH BEACH will think of a beach, and even if they do think of this particular neighborhood in San Francisco, they will not assume the wine comes from that place as North Beach has nothing to do with the growing of wine grapes or the production of wine (see In re Van Son Holland Ink Corp., 147 USPQ 292 (TTAB 1965)(HOLLAND not geographically descriptive for ink); Madera Wine & Liquor Co. v. RWL Wine & Liquor Co., 100 USPQ 173 (Md. 1954)(MT. ZION not geographically descriptive for wine)). For example, the office registered the mark HAIGHT ASHBURY, another San Francisco neighborhood, for wine because the neighborhood itself has nothing to do with wine other than the fact that wine is consumed there. See Reg. No. 4298370. As Applicant has previously noted, this is not the first time that Applicant or its counsel have seen this type of knee-jerk refusal from the Office. If an Examiner believes that a place has geographic significance and the goods are produced in a place 70 miles away with no connection to the place identified or the product, then the refusal should be based on geographic misdescriptiveness. Of course, that refusal requires that the Examiner meet the much higher standard of proving consumer deception under In re California Innovations, so it seems that Examiners instead are taking the easy way out of citing to In re Spirits of Merced and falling back on the one line distance notation included therein and simply doing a measuring test on Google maps. Applicant's wine will NOT be made from anything grown in North Beach nor will it be produced there. Accordingly, if the Examiner wants to make a refusal it should be based on geographic misdescriptiveness and the Examiner must prove consumer deception, which of course would be impossible. If the Examiner disagrees with this, Applicant respectfully requests that the matter be brought to the Examiner's supervising attorney. In fact, Applicant requests that the Examiner bring this matter to her supervising attorney in any case so that the supervising attorney may make the Office aware of the fact that this simplistic approach of counting miles in refusing applications based on geographic descriptiveness should stop and examiners should take a more academically rigorous approach to considering the relevant facts. Applicants should not be forced to foot the expense of educating the Office's examiner corps. Applicant respectfully requests that the application promptly be passed through to publication.

SIGNATURE(S)
Response Signature
Signature: /J. Scott Gerien/     Date: 07/01/2013
Signatory's Name: J. Scott Gerien
Signatory's Position: Attorney of Record, California bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 85882969
Internet Transmission Date: Mon Jul 01 18:33:27 EDT 2013
TEAS Stamp: USPTO/ROA-XXX.X.XX.XX-201307011833276451
93-85882969-500672f4975877195cd06286e6a1
bcaa9d71f9218bfd6f9e210f3d1be154f5342-N/
A-N/A-20130701181426193401