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:  November 02, 2019

 

 

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 11, 2019.

 

In a previous Office action dated June 5, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(2) because the applied-for mark is primarily geographically descriptive. 

 

Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.  Therefore, 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:

• Refusal – Section 2(e)(2) Primarily Geographically Descriptive

 

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 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 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.

 

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).

 

Applicant has applied to register the mark PENN STATION for “Railroad transportation services; providing specialized facilities for mass transit for the general public; transportation reservation services; transportation information; transportation of goods and passengers” in International Class 039.

 

In the present case, the previously attached Internet evidence shows that the term PENN is an abbreviation for “Pennsylvania.”  See the previously attached evidence from http://www.ahdictionary.com/word/search.html?q=Penn.  Also, the previously attached Internet evidence shows that Pennsylvania is “a state in the northeastern US.” See the previously attached evidence from http://en.oxforddictionaries.com/definition/us/Pennsylvania. Furthermore, the previously attached Internet evidence shows that Pennsylvania commonly attracts visitors due to the states historical landmarks, arts and culture, and outdoor recreational activities.  See the previously attached evidence from http://www.pa.gov/guides/exploring-pa/.  Thus, PENN or Pennsylvania is a generally known geographic location.

 

Further, the addition of generic or highly descriptive wording 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 Hollywood Lawyers Online, 110 USPQ2d 1852, 1853-54 (TTAB 2014) (holding HOLLYWOOD LAWYERS ONLINE primarily geographically descriptive of attorney referrals, online business information, and an online business directory); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1920 (TTAB 2008) (holding NORMANDIE CAMEMBERT primarily geographically descriptive of cheese).  In the present case, the previously attached Internet evidence shows that the term STATION means “a building or place where buses, trains, or other public vehicles stop so that passengers can get on or off.”  See the previously attached evidence from http://www.macmillandictionary.com/dictionary/american/station_1.  This term, in connection with applicant’s services, merely describes a feature of the services, that is, applicant provides a facility or station for mass transit.  As such, this term has very little significance in creating the mark’s overall commercial impression and diminishing the mark’s primary geographic significance.

 

Moreover, the previously attached Internet evidence shows that Pennsylvania Station, also known as New York Penn Station or Penn Station, is a railway station that connects New York City with other cities including Philadelphia, Pennsylvania.  See the previously attached evidence from http://en.wikipedia.org/wiki/Pennsylvania_Station_(New_York_City) and http://www.american-rails.com/pennsylvania-station.html.  Thus, applicant’s services are provided in Pennsylvania, and consumers are likely to believe that applicant’s services are provided in Pennsylvania because PENN STATION is a railroad station that provides transportation services from Pennsylvania and New York.  Therefore, the term PENN is geographically descriptive.

 

In applicant’s response applicant argues that that the applied-for mark is a coined term and that applicant’s transportation station is widely recognized and has a popular significance apart from its offering services to Pennsylvania.  Applicant’s arguments are unpersuasive because if the most prominent meaning or significance of a mark is geographic for the services in the application, the fact that the mark may have other meanings in other contexts does not alter its geographic significance in the context of the application.  See In re Opryland USA Inc., 1 USPQ2d 1409, 1412-13 (TTAB 1986) (holding the mark THE NASHVILLE NETWORK primarily geographically descriptive of television program production and distribution services when finding that the primary significance of the term referred to Nashville, Tennessee and not that of a style of music); In re Cookie Kitchen, Inc., 228 USPQ 873, 874 (TTAB 1986) (noting that where MANHATTAN refers to a type of cocktail and to a geographic location that having an alternative meaning does not alter the mark’s primary geographic significance in the context of the goods in the application); In re Jack’s Hi-Grade Foods, Inc., 226 USPQ 1028, 1029 (TTAB 1985) (noting that where NEAPOLITAN refers to a type of ice cream and also means “pertaining to Naples, Italy” that having an alternative meaning does not alter the mark’s primary geographic significance in the context of the goods in the application); TMEP §1210.02(b)(i).  Here, the applied-for mark in connection with applicant’s services is primarily geographic because PENN STATION is a railroad station that provides transportation services from Pennsylvania, New York and other major cities. 

 

Moreover, the attached Internet evidence shows that PENN STATION is a prominent landmark in Manhattan, New York.  See the attached evidence from http://allthatsinteresting.com/old-penn-station; http://www.newyorktour1.com/blog/history-penn-station/?gclid=EAIaIQobChMI1pCpv9vL5QIVBJyzCh2cvwC1EAMYASAAEgJ2d_D_BwE; and http://www.tripsavvy.com/a-complete-guide-to-nyc-penn-station-4584476.  Furthermore, applicant’s identification of services has no limitations or restrictions, and as such, the services can include transportation to Pennsylvania by rail or providing mass transit facilities in Pennsylvania. 

 

Additionally, for services to originate in a geographic place, the record must show that they are rendered at least in part in the geographic place.  See In re Chalk’s Int’l Airline Inc., 21 USPQ2d 1637 (TTAB 1991) (holding PARADISE ISLAND AIRLINES primarily geographically descriptive of air transportation services of passengers and/or goods that are performed at least in part on Paradise Island); In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (holding CALIFORNIA PIZZA KITCHEN primarily geographically descriptive of restaurant services rendered in California and outside the state as well); In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986) (holding THE NASHVILLE NETWORK primarily geographically descriptive of television production and distribution services provided in Nashville); TMEP §1210.03.  In the present case, the record establishes that applicant’s services extend to the geographic location Pennsylvania. 

 

Accordingly, the applied-for mark is primarily geographic and registration is refused on the Principal Register pursuant to Section 2(e)(2) of the Trademark Act.

 

ADVISORIES

 

SUPPLEMENTAL REGISTER

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).  In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

DISCLAIMER

 

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 will be required to disclaim “STATION” because such wording appears to be generic in the context of applicant’s services.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).

 

Applicant may submit a disclaimer in the following format:

 

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

 

TMEP §1213.08(a)(i).

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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 response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Sahar Nasserghodsi/

Sahar Nasserghodsi

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@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 November 02, 2019 for

U.S. Trademark Application Serial No. 88344464

 

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. 

 

 

/Sahar Nasserghodsi/

Sahar Nasserghodsi

Examining Attorney

Law Office 115

(571)272-9192

Sahar.Nasserghodsi@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 November 02, 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.”