| To: | NORTH AMERICAN RESCUE, LLC (docketing@dority-manning.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88056128 - NORTH AMERICAN RESCUE - NAR-156-TM |
| Sent: | 5/3/2019 5:40:17 PM |
| Sent As: | ECOM108@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
|
U.S. APPLICATION SERIAL NO. 88056128
MARK: NORTH AMERICAN RESCUE
|
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
|
APPLICANT: NORTH AMERICAN RESCUE, LLC
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/3/2019
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on April 15, 2019.
In a previous Office action dated October 28, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(2) for being primarily geographically descriptive. In addition, applicant was required to satisfy the following requirements: amend the identification of goods and adhere to multiple-class application requirements. The applicant was also given notice of a prior-filed application which might present a bar to registration of the applicant’s mark.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: amend the identification of goods and adhere to multiple-class application requirements. See TMEP §§713.02, 714.04. Additionally, as the applicant claimed ownership of the cited prior-filed application, the prior-filed application no longer presents a bar to registration of the applicant’s mark.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL
- Section 2(e)(2) Refusal – Primarily Geographically Descriptive
- 2(f) Suggested (Advisory)
SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
Registration is refused because the applied-for mark is primarily geographically descriptive of the origin of applicant’s goods. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a).
Applicant’s mark is “NORTH AMERICAN RESCUE” for “Wound dressings; gauze; bandages for skin wounds in the nature of entry and exit wound patches and seals” in International Class 5 and “Needles for medical use; catheters and parts and fittings therefor; medical devices for use in cannulation or to stem the flow of traumatic bleeding, namely, tourniquets; medical waste containers for the disposal of needles and sharps; blankets for medical purposes, namely, blankets for hypothermia prevention; medical devices for securing intravenous catheter hoses in the nature of a retention band; saline lock kits comprised primarily of needles for medical use, catheters and parts and fittings therefore, tubing for use with catheters, medical devices for securing intravenous catheter hoses in the nature of a retention band, saline solution for medical purposes, gauze, and wound dressing” in International Class 10.
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 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 association; that is, purchasers would be likely to believe that the goods 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 Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014).
In the October 28, 2018 Office action, the trademark examining attorney indicated that the primary significance of the applied-for mark is a generally known geographic place or location, specifically, North America. “NORTH AMERICA” is defined as the “continent of the western hemisphere northwest of South America bounded by the Atlantic, Arctic, and Pacific oceans and including Canada, the United States, Mexico, and the countries of Central America having an area of 9,361,791 square miles.” See the dictionary evidence attached to the October 28, 2018 Office action. “NORTH AMERICAN” is the adjective form of “NORTH AMERICA”.
In this case, the applicant is located in South Carolina. South Carolina is part of the United States and thus part of North America. Therefore, applicant’s goods originate in North America. See the definition of South Carolina from Merriam-Webster Online Dictionary, attached to the October 28, 2018 Office action.
In the April 15, 2019 response to the Office action, the applicant argued that “the ‘North American’ portion of the mark is at most suggestive of a use for a product” and that those products “could be provided not only within North America but across the globe.” The examining attorney is not persuaded by this argument. As indicated previously, when “AMERICA” or “AMERICAN” appears in a mark such that it primarily denotes the country of the United States as the origin of the goods, then the primary significance is as a geographic location.
“RESCUE” is defined as “to save someone or something from danger or harm.” See the evidence from the Merriam-Webster Online Dictionary attached to the October 28, 2018 Office action. Therefore, the term “RESCUE” is descriptive of applicant’s goods, namely, medical apparatus and products in the nature of “wound dressings; gauze; bandages for skin wounds in the nature of entry and exit wound patches and seals; needles for medical use; catheters and parts and fittings therefor; medical devices for use in cannulation or to stem the flow of traumatic bleeding, namely, tourniquets; medical waste containers for the disposal of needles and sharps; blankets for medical purposes, namely, blankets for hypothermia prevention; medical devices for securing intravenous catheter hoses in the nature of a retention band; saline lock kits comprised primarily of needles for medical use, catheters and parts and fittings therefore, tubing for use with catheters, medical devices for securing intravenous catheter hoses in the nature of a retention band, saline solution for medical purposes, gauze, and wound dressing” used in the process of saving someone or something from danger or harm.
Therefore, the applied-for mark is primarily geographically descriptive of the goods.
Considering all of the above, the refusal under Trademark Act Section 2(e)(1) is hereby made FINAL.
2(f) SUGGESTED (ADVISORY)
In the April 15, 2019 response, the applicant stated that “the mark has been continually used for at least the last five years in all relevant fields.” The applicant; however, did not properly amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f).
If applicant believes applicant’s mark has acquired distinctiveness, that is, it has become a distinctive source indicator for the applied-for goods, applicant has the option to amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f). See 15 U.S.C. §1052(f); TMEP §1212.05.
To amend the application to Section 2(f) based on five years’ use, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit the following written statement claiming acquired distinctiveness, if accurate:
The mark has become distinctive of the goods through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08. This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
RESPONSE GUIDELINES FOR FINAL REFUSAL
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Anna C. Burdecki/
Anna C. Burdecki
Trademark Examining Attorney
Law Office 108
Phone: (571)270-1941
anna.burdecki@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.