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 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 29, 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.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’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).
REFUSAL TO REGISTER – PROPOSED MARK IS GEOGRAPHICALLY DESCRIPTIVE
Registration is refused because the applied-for mark is primarily geographically descriptive of the
origin of applicant’s goods and/or 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).
The proposed mark is URGENT CARE OF MENIFEE LAKES for “Emergency medical services; Healthcare.”
Menifee Lakes appears to be a neighborhood located in and/or near Menifee, California. See attached website images. In addition, applicant has an application for similar services for MENIFEE URGENT CARE. See attached application. Therefore, applicant’s services appear to be intended to be located in Menifee Lakes, California.
A prima facie showing that a public association exists between applicant’s goods and/or services
and the geographic place named in the mark is sufficient to support a refusal. The named geographic location need not be well known or noted for the goods and/or
services, but only likely to be associated with applicant’s goods and/or services. See TMEP §§1210.04, 1210.04(a); see,
e.g., In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed. Cir. 1985); In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988).
Remoteness or obscurity of a geographic location is determined not in the abstract, but from the point
of view of the consumers of the particular goods and/or services. TMEP §1210.04(c); see In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305, 1309-10
(TTAB 2006) (holding that the relevant consumer, purchasers of vodka, including Russian vodka, would likely know the geographic significance of the mark because they are most likely either from
Russia, have Russian relatives, or became familiar with Russia when learning the language); In re MCO Props. Inc., 38 USPQ2d 1154, 1155-56 (TTAB 1995) (holding FOUNTAIN HILLS
primarily geographically descriptive of real estate development services rendered in Fountain Hills, Arizona, population 10,030, because the record showed Fountain Hills to be the name of the town
where applicant was located and rendered its services, and relevant consumers in the real estate market who came into contact with applicant’s promotional brochure specimen would associate the place
with the services); cf. In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959-60, 3 USPQ2d 1450, 1452-53 (Fed. Cir. 1987) (holding VITTEL and design not
primarily geographically descriptive of cosmetic products because evidence that the town had a resort with mineral springs where the water was bottled and distributed was insufficient to show that
the bulk of cosmetic purchasers would, upon seeing the word Vittel on a bottle of skin lotion or the like, conclude it was a place name and that the lotion came from there).
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).
Further, “urgent care” is defined as medical care of an urgent nature. See attached definition. Applicant’s
emergency medical services and healthcare services are worded broadly enough to include urgent care services. Therefore, URGENT CARE is a descriptive/generic term
that does not diminish the geographic significance of MENIFEE LAKES.
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).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
REQUEST FOR INFORMATION
Applicant must provide a written statement explaining whether the services or
any aspect of the services will be rendered in, or will have any other connection with, the geographic location named in the mark. See 37
C.F.R. §2.61(b); TMEP §§814, 1210.03. Failure to comply with a request for information is grounds for refusing registration.
In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
ADVISORY REGARDING 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.
Applicant is advised that, if an acceptable allegation of use and an amendment to
the Supplemental Register are filed, applicant will be required to disclaim “URGENT CARE” because such wording appears to be generic in the context of applicant’s goods and/or 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 “URGENT CARE” 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.
CANNOT DISCLAIM ENTIRE MARK
Applicant has disclaimed the entire applied-for mark; however, an entire mark may not be
disclaimed. TMEP §1213.06; see 15 U.S.C. §1056(a); In re Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051
(Fed. Cir. 1991); In re JT Tobacconists, 59 USPQ2d 1080, 1081 n.1 (TTAB 2001). If the applied-for mark is not registrable as a whole, a
disclaimer will not make it registrable. TMEP §1213.06. Accordingly, the disclaimer is not accepted and will not be entered into
the USPTO’s database. See TMEP §714.05(a).
ATTORNEY BAR MEMBERSHIP INFORMATION REQUIRED
Attorney bar information required. Applicant’s attorney must provide the following bar information: (1) his or her bar membership number, if the bar provides one; (2) the name
of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar. 37 C.F.R. §2.17(b)(3). This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id. If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record. See id.
ATTORNEY ATTESTATION REQUIRED
Attorney attestation required.
Applicant’s attorney must provide the following statement: “I attest that I am an attorney who is an active member in good standing of the bar of the highest court
of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).” See 37 C.F.R. §2.17(b)(3). This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining
attorney directly at the number below.
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
/Mark Sparacino/
Trademark Attorney
US Patent and Trademark Office
Law Office 103
571-272-9708
Mark.Sparacino@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.
