Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  December 14, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on November 1, 2019.

 

In a previous Office action dated May 1, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  a Section 2(e)(2) Refusal – Mark is Primarily Geographically Descriptive.  The trademark examining attorney also specified a requirement for entity clarification. The trademark examining attorney notes that this entity clarification requirement has been satisfied.

 

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 that applicant must address:

 

• Section 2(e)(2) Refusal – Primarily Geographically Descriptive (maintained)
• Advisory: Supplemental Register Available

 

All Relevant Arguments and Evidence Included with the Previous Office Action are Continued and Maintained

 

SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE

 

Applicant seeks to register FLORIDA in stylized form with a design elementin connection with “Athletic footwear; Athletic shirts; Athletic shorts; Bandanas; Baseball caps and hats; Bathing suits; Bathing trunks; Beach coverups; Beanies; Bikinis; Flip flops; Hats; Headwear; Headwear, namely, beanies, sweatbands, lifeguard, visors, baseball hats, caps; Hoodies; Leggings; Long-sleeved shirts; Neck gaiters; Polo shirts; Sandals; Sandals and beach shoes; Shorts; Surf wear; Sweatshirts; T-shirts; T-shirts for men, women, children; Tank tops; Wet suits; Women's athletic tops with built-in bras; Women's hats and hoods; Graphic T-shirts; Hooded sweatshirts; Hooded sweatshirts for men, women, children; Short-sleeved or long-sleeved t-shirts” in International Class 25. See application.

 

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). 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). The applied-for mark satisfies the three-prong test . First, the word FLORIDA identifies a generally known geographic place of the state of Florida in the United States. See previously attached evidence from the Columbia Gazetteer

.

As shown in the previously attached document, the state of Florida has approximately 18,089,888 residents. See previously attached evidence from the Columbia Gazetteer. Notably, Florida is the second most visited state in the United States, and is known for Walt Disney World, the Everglades, South Beach, and the Overseas Highway. See previously attached information from the World Atlas. Therefore, the primary significance of FLORIDA is to identify a known geographic location that is neither obscure nor remote.

 

The design element of the applied-for mark – an inverse outline of the state of Florida as depicted on a traditional map of the United States – does not diminish the term’s primary geographic significance. An accurate picture or design of geographically descriptive matter and the word or words that describe the design are legal equivalents. See In re Can. Dry Ginger Ale, Inc. , 86 F.2d 830, 832, 32 USPQ 49, 50 (C.C.P.A. 1936) (holding a map of Canada equivalent to the word “Canada” and primarily geographically descriptive of applicant’s soft drinks); East Tenn. Packing Co. v. Armour & Co. , 102 USPQ 425, 426 (Chief Exam’r 1954) (finding a map of Tennessee equivalent to the word “Tennessee”); TMEP §1210.02(a).

 

Here, the design represents an accurate inverse outline of the state of Florida, as traditionally depicted on a map of the United States. Further, this design represents the letter “F”, followed by “ORIDA”, which reinforces to the consumer that the letter “F” is a depiction of the state of Florida. Such a depiction does not diminish the term’s primary geographic significance, but rather reinforces the mark as geographically descriptive because it provides another means for the consumer to associate the applied-for mark with Florida. As such, the design element does not diminish the primary geographic significance of FLORIDA in the applied-for mark.

 

Second, goods are considered to originate from a geographic location when the record shows that the goods are sold there, manufactured or produced there, packaged and shipped from there, and/or contain a main ingredient or component derived from there. See In re Jacques Bernier Inc. , 894 F.2d 389, 391-92, 13 USPQ2d 1725, 1727 (Fed. Cir. 1990), opposition sustained sub nom. Fred Hayman Beverly Hills, Inc. v. Jacques Bernier Inc. , 38 USPQ2d 1691 (TTAB 1996) (holding applicant’s perfume did not originate from RODEO DRIVE because, although goods did not have to be manufactured or produced at the geographic site and could “be sold there” to originate from the geographic location, there was insufficient evidence to show that perfume was sold on RODEO DRIVE); In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305, 1310 (TTAB 2006) (holding applicant’s vodka originated from BAIKALSKAYA, a Russian word meaning “from Baikal,” because it was made from the water of Lake Baikal and applicant produced various vodkas from a location near Lake Baikal).

 

Here, applicant’s address of record is in Florida, and applicant sells the goods from the state of Florida. See applicant’s web site. As such, the goods are considered to originate from the state of Florida.

 

Third, purchasers would be likely to make a goods-place association. 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 with the place is presumed if an applicant’s goods 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).

 

Here, the primary significance of FLORIDA is that of a geographic location, and the design does not diminish the primary significance of Florida as that of a geographic location. Additionally, applicant sells the goods in the state of Florida. Therefore, a goods-place association is presumed.

 

Applicant argues that the applied-for mark is not primarily geographic.  Specifically, applicant provides a list of other marks in which design marks have disclaimed the literal elements, rendering the design elements are the protectable part of the marks.  This argument is not persuasive.  In contrast to the cited marks, applicant’s mark is FLORIDA, with the letter “F” depicting the state of Florida.  In this way, both the design mark as well as the literal wording conveys the same idea, that is, the state of Florida.  Thus, the design element reinforces the geographic impression of the mark – Florida.  As such, applicant’s argument is not persuasive and does not obviate this refusal.

 

For the foregoing reasons, the mark is primarily geographically descriptive and registration is FINALLY refused pursuant to Section 2(e)(2) of the Trademark Act.

 

ADVISORY: SUPPLEMENTAL REGISTER AVAILABLE

 

The applied-for mark has been refused registration on the Principal Register. Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s). TMEP §816.04.

Although applicant’s mark has been refused registration on the Principal Register, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

 

RESPONSE GUIDELINES

 

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

 

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.  

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/James McNamara/

James McNamara

Examining Attorney

Law Office 127

571-272-0923

james.mcnamara@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 14, 2019 for

U.S. Trademark Application Serial No. 88295482

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/James McNamara/

James McNamara

Examining Attorney

Law Office 127

571-272-0923

james.mcnamara@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 14, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”