Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88122180 PEACE RIVER(Standard Characters, see http://uspto.report/TM/88122180/mark.png) has been amended as follows:

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

This is in response to the Office Action of January 3, 2019. The Examiner refused registration of the mark under Section 2(e)(2) of the Trademark Act as being primarily geographically descriptive of the origin of the Applicant's goods. Applicant submits that the Examiner has not established a prima facie case for rejection of the mark on this basis, and requests reconsideration and withdrawal of the Examiner's refusal to registration in view of the following remarks.

The Examiner asserts that the mark PEACE RIVER is primarily geographically descriptive of the origin of the Applicant's goods. The Trademark Manual of Examining Procedure (TMEP) at 1210.01(a) sets out the following three-prong test for establishing whether a mark is primarily geographically descriptive:

(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.

All of the foregoing factors must be present for a mark to be primarily geographically descriptive of the origin of the Applicant's goods. The burden is on the Trademark Office to establish a prima facie case for refusal of a mark that is primarily geographically descriptive. Where the evidence is insufficient to establish that the primary significance of the mark is a generally known geographic place or location, or that the goods and/or services for which the applicant seeks registration originate in the geographic place identified in the mark, or that 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), then the mark should not be rejected for being primarily geographically descriptive of the origin of the Applicant's goods.

The Federal Circuit emphasized in In re Newbridge Cutlery Co., 776 F.3d 854, 113 U.S.P.Q.2d at 1449 (Fed. Circ. 2015) ("Newbridge") that the word "primary" should not be overlooked. If the geographic meaning is minor, obscure, remote or unconnected with the applicant's goods, then registration should not be refused as primarily geographically descriptive.

In the present case, the Examiner has presented a webpage at http://geology.com/world/canada-satellite- image.shtml (the "Geology webpage") showing a map of Canada. This map indicates that there is a river in Alberta, Canada that is named "Peace River". As a result, the Examiner alleges that the evidence demonstrates that Peace River is a generally known place, being a river in Alberta, near the British Columbia border, where the Applicant is located. The Examiner alleges that as demonstrated by the Applicant's address, the goods originate "nearby" and thus purchasers will presume a goods-place association. The Geology webpage is the only reference that was provided by the Examiner to support their conclusion that the "primary significance" of the mark is a generally known geographic place.

Applicant respectfully submits that the Geology webpage does not support the conclusion drawn by the Examiner. While the map of Canada shown on the Geology webage indicates that there is a river in Alberta, Canada that is named Peace River, the Geology webpage fails to demonstrate that the primary significance of the mark is a generally known geographic place or location, or that the goods and/or services for which Applicant seeks registration originate in the geographic place identified in the mark, or that purchasers would be likely to make a goods-place or services-place association. For purposes of assessing whether a mark is generally known, the relevant public is the purchasing public in the United States of the types of goods or services identified in the application (see Newbridge at 1449). In the present case, the purchasing public in the United States for the Applicant's snack foods, snack bars, snack mixes and cereals would be the American public as a whole. While the Examiner has noted that Peace River is the name of a river in Alberta, Applicant submits that the river of Peace River is not a "generally known geographic place or location" from the perspective of the average American consumer. In addition, according to Wikipedia, Peace River is also the name of a small town in Alberta on the banks of the Peace River and which has a population of approximately 6,000 (see enclosed Wikipedia article at http://en.wikipedia.org/wiki/Peace_River,_Alberta). The town of Peace River is located over 1,000 km away from the nearest United States-Canada border crossing (see enclosed printout from a search at www.google.com/maps for directions between Peace River, Alberta and the United States border).

The small size of the town of Peace River, coupled with the fact that it is located a considerable distance away from the nearest US border crossing, would indicate that the mark's geographic meaning is likely to be lost on the average American consumer. The geographic matter of "Peace River" is so obscure and remote that it is unlikely that the American public as a whole would perceive the geographic matter of the term as its primary significance, let alone associate the goods with either the river or the town in Alberta also known by that name. As such, the evidence is insufficient to establish a prima facie case that the mark has its primary significance as a generally known place.

The facts of this case are comparable to those considered in Newbridge, in which it was concluded by the Federal Circuit that Newbridge, Ireland is not a "generally known geographic place" under the first prong of the geographically descriptive test, notwithstanding that there was some evidence in the form of a number of websites including Wikipedia and tourism websites that advertised Newbridge, Ireland as a large commercial town with a silverware visitor centre, museums, gardens, historical and battle sites and a famous horse-racking track. The Federal Circuit found that "[t]he conclusion that Newbridge, Ireland, a town of less than twenty thousand people, is a place known generally to the relevant American public is not supported by substantial evidence". It was held that simply existing as a named location with an online presence is not the same as evidence showing "the extent to which the relevant American Consumer would be familiar" with the location.

The Court in Newbridge cautioned against reliance solely on Internet presence in the circumstances, as "[t]he Internet contains enormous amounts of information: some of it is generally known, and some of it is not". Applicant submits that in the present case, the river of Peace River and the town of Peace River, having a population of 6,000 and located on the banks of the Peace River, are even more obscure than the town of Newbridge, Ireland that was considered in the Newbridge case and found not to have primary significance as a generally known place. Given the small size and remoteness of Peace River, it is unlikely that the mark PEACE RIVER is generally known by the average American consumer to refer to a place, whether it be the town or river of Peace River. There is no evidence to suggest that the information contained in the located webpages indicating that Peace River is the name of a river or town in Alberta, Canada, is generally known to the average American consumer. As such, absence any additional evidence, it is clear that the geographical place name of Peace River falls short of being "generally known" to the relevant American public.

In addition, contrary to the Examiner's assertion, Applicant's goods do not originate in or near Peace River, which is a specific place in Canada, whether it is the river or the town of Peace River. While at least some of the Applicant's goods may originate in Canada generally, they would not generally originate in Peace River, Alberta. As such, Applicant also submits that purchasers would be unlikely to make a goods-place association.

There is insufficient evidence to support any of the three prongs of the primarily geographic descriptive test under TMEP 1210.01(a). Therefore, the Examiner has not provided a sufficient basis for refusal of the mark. Applicant submits that the mark PEACE RIVER is simply an arbitrary designation that should not be refused for registration under section 2(e)(2) of the Act.

Finally, in connection with the geographically descriptive issue, the Applicant notes for the Examiner's benefit that the Applicant's corresponding Canadian trademark application No. 1712917 for PEACE RIVER was allowed and has been registered (as registration No. TMA1013160), even though under the Canadian Trade-marks Act there is a similar prohibition to registration of a trademark that is clearly descriptive or deceptively misdescriptive of the place of origin of the goods.

The Examiner also requested revised descriptions for the class 29 and 30 goods presently on file, as the Examiner believes that the identification of goods is indefinite and lacks specificity. Accordingly, Applicant has amended these descriptions to read as follows:

Class 29: Snack foods in bar form, namely, nut and seed-based snack bars also containing brittle; nut and seed- based snack bars; snack mix consisting primarily of processed nuts, dried fruit, seeds, granola and candy

Class 30: Processed cereals; breakfast cereals, including ready-to-eat cereals, muesli and oat bran cereal; cereal- based snack food; granola-based snack bars; processed grains for eating; wheat-based snack foods

Applicant submits that in view of the amendments and the foregoing marks, this application is in condition for approval for publication.

EVIDENCE
Evidence in the nature of Printout from a search at www.google.com/maps for directions between Peace River, Alberta and the United States border Printout from Wikipedia article on Peace River, Alberta at http://en.wikipedia.org/wiki/Peace_River,_Alberta has been attached.
Original PDF file:
evi_506726177-20190424024041797076_._Google_Maps_Peace_River_to_United_States_border.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_506726177-20190424024041797076_._Peace_River_Alberta_Wikipedia.pdf
Converted PDF file(s) ( 21 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 029 for snack foods in bar form, namely, nut and seed-based brittle and nut and seed-based bars; snack mix consisting of nuts, dried fruit, seed, granola and candy
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: snack foods in bar form, namely, nut and seed-based brittle and nut and seed-based bars; snack foods in bar form, namely, nut and seed-based snack bars also containing brittle; snack mix consisting of nuts, dried fruit, seed, granola and candy; nut and seed-based snack bars; snack mix consisting primarily of processed nuts, dried fruit, seeds, granola and candyClass 029 for snack foods in bar form, namely, nut and seed-based snack bars also containing brittle; nut and seed-based snack bars; snack mix consisting primarily of processed nuts, dried fruit, seeds, granola and candy
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number 1013160 registered 01/16/2019 with a renewal date of __________ and an expiration date of 01/16/2034 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-381424935-194709837_._PEACERIVER_CIPO_TM_Registration_Certificate.PDF
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for processed cereals; breakfast cereals, including ready-to-eat cereals, muesli and oat bran cereal; cereal-based snack food; granola-based snack food; processed grains for eating; wheat-based snack foods
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: processed cereals; breakfast cereals, including ready-to-eat cereals, muesli and oat bran cereal; cereal-based snack food; granola-based snack food; granola-based snack bars; processed grains for eating; wheat-based snack foodsClass 030 for processed cereals; breakfast cereals, including ready-to-eat cereals, muesli and oat bran cereal; cereal-based snack food; granola-based snack bars; processed grains for eating; wheat-based snack foods
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Canada registration number 1013160 registered 01/16/2019 with a renewal date of __________ and an expiration date of 01/16/2034 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-381424935-194709837_._PEACERIVER_CIPO_TM_Registration_Certificate.PDF
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

SIGNATURE(S)
Response Signature
Signature: /Amy M. Fong/     Date: 05/01/2019
Signatory's Name: Amy Fong
Signatory's Position: Canadian OED attorney of record

Signatory's Phone Number: 604-643-5909

The signatory has confirmed that he/she is a Canadian attorney/agent, or an associate thereof, who represents an owner/holder located in Canada; that he/she is either registered with the USPTO and in good standing as a patent agent under 37 C.F.R. §11.6(c) or he/she has been granted reciprocal recognition under 37 C.F.R. §11.14(c) by the USPTO's Office of Enrollment and Discipline; and, that to the best of his/her knowledge, if prior to his/her appointment another Canadian attorney/agent or a U.S. attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88122180
Internet Transmission Date: Wed May 01 14:07:25 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190501140725749
919-88122180-620991ecc73e7fe86b6e96e33d9
e4babeb15d51a852b31db2e29d0d01dba3cdb-N/
A-N/A-20190501135704932277