Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 22, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

DATABASE SEARCH:  The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

• Refusal – Section 2(e)(2) – Mark is Primarily Geographically Descriptive
• Advisory – Supplemental Register
• Requirement – Amend Identification of Goods
• Requirement – Amend Mark Description

REFUSAL – SECTION 2(e)(2) – MARK IS 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).

 

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; 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 primary significance of the mark is a generally known geographic place or location

The primary significance of the wording PEEKSKILL is a generally known geographic place or location. The attached evidence from Wikipedia.org, cityofpeekskill.com, and columbiagazetteer.org shows that the wording PEEKSKILL is a city in the state of the New York.

The goods for which applicant seeks registration originate in the geographic place identified in the mark

A product that is produced or a service that is provided near the geographic place named in the applied-for mark is sufficient to support a finding that the goods and/or services originate in that geographic location.  See, e.g., In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007) (holding YOSEMITE BEER primarily geographically descriptive of beer produced and sold in Merced, California, a city located 80 miles from Yosemite National Park, where the goods originated in an area “located near YOSEMITE”); In re Joint-Stock Co. "Baik," 80 USPQ2d 1305, 1310-11 (TTAB 2006) (holding BAIKALSKAYA, the Russian equivalent of “from Baikal” or “Baikal’s,” primarily geographically descriptive of vodka where applicant was located near Lake Baikal, and applicant did not dispute that it produced vodka from a location near and used water from Lake Baikal); see also Warwood v. Hubbard, 228 USPQ 702, 702-03 (Mont. 1985) (holding YELLOWSTONE OUTFITTERS primarily geographically descriptive of outfitting services offered "near Yellowstone Park").

 

The Trademark Trial and Appeal Board has stated that the purpose of Trademark Act Section 2(e)(2) is “to leave geographic names free for all businesses operating in the same area to inform customers where their goods or services originate.”  In re Spirits of New Merced, 85 USPQ2d at 1621 (citing In re MCO Props. Inc., 38 USPQ2d 1154, 1156 (TTAB 1995)).

 

Applicant’s address shows its location in New York, New York and the attached evidence from Google.com shows that Peekskill is located approximately 45 miles from applicant’s address of record. Therefore, it is presumed that applicant’s goods will originate in or near Peekskill, New York.

Purchasers would be likely to make a goods-place; that is, purchasers would be likely to believe that the goods originate in the geographic place identified in the mark

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 and/or services with the place is presumed if an applicant’s goods and/or services 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).

 

In this case, the primary significance of PEEKSKILL is a geographic location and applicant has it address location in the record near this geographic location. Under these circumstances, a goods-place association is presumed.

Based on the evidence and analysis above, applicant’s applied-for mark is primarily geographically descriptive and must be refused under Section 2(e)(2) of the Lanham Act.

ADVISORY – 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.

 

Although applicant’s mark has been refused registration, 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 requirements set forth below.

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS

The wording “tops” and “caps” in the identification of goods is indefinite and must be clarified because it does not specify the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “tops as clothing” and “caps as headwear.”

 

The wording “outerwear” in the identification of goods is indefinite and must be clarified because the wording does not specify the godos.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “outerwear in the nature of {indicate articles of clothing, e.g., coats, etc.}.”

 

Applicant may substitute the following wording, if accurate:

 

Class 25: Clothing, namely, shorts, briefs, beachwear, and swimsuits: men's and women's sportswear and ready-to-wear, namely, tops as clothing, t-shirts, jackets, outerwear in the nature of {indicate articles of clothing, e.g., coats, etc.}, shirts, blouses, dresses, sweaters, shirts, pants, and skirts; women's short skirts, bras, camisoles, bodysuits, and bikini top and bottoms; clothing accessories, namely, men's and women's caps being headwear, hats, shoes, socks, scarves, and gloves

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

REQUIREMENT – AMEND MARK DESCRIPTION

Applicant must submit an amended description of the mark that agrees with the mark on the drawing.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  The current description is inconsistent with the mark on the drawing and thus is inaccurate.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify only those literal and design elements appearing in the mark.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d). 

 

The following description is suggested, if accurate:  The mark consists of the word “PEEKSKILL” in stylized form.

 

ASSISTANCE

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

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 nonfinal Office action  

 

 

/Christina Calloway/

Examining Attorney

Law Office 122

571-272-7342

christina.calloway@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 August 22, 2019 for

U.S. Trademark Application Serial No. 88455154

 

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. 

 

 

/Christina Calloway/

Examining Attorney

Law Office 122

571-272-7342

christina.calloway@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 August 22, 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.”