To: | The Carnegie Hall Corporation (trademarks@kirkland.com) |
Subject: | U.S. Trademark Application Serial No. 88497638 - NATIONAL YOUTH ORCHESTRA OF THE - 43443-1 |
Sent: | September 26, 2019 01:14:46 PM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88497638
Mark: NATIONAL YOUTH ORCHESTRA OF THE
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Correspondence Address:
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Applicant: The Carnegie Hall Corporation
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Reference/Docket No. 43443-1
Correspondence Email Address: |
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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: September 26, 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).
SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
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 services for which applicant seeks registration originate in the geographic place identified in the mark; and
(3) Purchasers would be likely to make a 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).
Here, applicant’s mark is NATIONAL YOUTH ORCHESTRA OF THE UNITED STATES OF AMERICA, for “Organizing and conducting musical programs, namely, auditions, training and tour performances for young musicians who perform together as a symphony orchestra”, in International Class 41.
First, the attached evidence from the Columbia Gazetteer of the World and the Oxford Dictionary shows that the United States of America is primarily a well-known geographic place, namely, a country with a population of approximately 300 million people. http://www.columbiagazetteer.org/main/ViewPlace/1/148493; http://www.lexico.com/en/definition/united_states. Thus, the United States of America is primarily a well-known geographic place.
Specifically, the wording NATIONAL means “of, or relating to, a characteristic of a nation; a citizen of a particular nation”. http://www.ahdictionary.com/word/search.html?q=national. The wording YOUTH means “the period between childhood and adult age; young people considered as a group”. http://www.lexico.com/en/definition/youth. Last, the wording ORCHESTRA means “a group of instrumentalists, especially one combining string, woodwind, brass, and percussion sections and playing classical music”. http://www.lexico.com/en/definition/orchestra.
Thus, taken together, the wording NATIONAL YOUTH ORCHESTRA, per the above attached dictionary evidence, conveys a musical ensemble of instrumentalists that consists of young people from across the nation, that nation being the United States of America. This wording is merely descriptive of a feature or characteristic of applicant’s services, namely, the type of services being offered and the intended audience or user of said services. Additionally, applicant uses the wording orchestra and a variation of the wording youth in their identification of services. Thus, including NATIONAL YOUTH ORCHESTRA in the mark does not obviate the Section 2(e)(2) refusal.
Applicant’s application states that the city and state of the owner’s address is in New York, New York. Additionally, the nature of applicant’s services, organizing and conduction musical auditions and training, establishes that the services originate at least in part in New York, New York, because the place where applicant provides these services is at Carnegie Hall, which is permanently located in New York, New York.
Third, 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 services with the place is presumed if an applicant’s 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). As shown above, the United States of America is primarily a geographic place, and it is neither remote nor obscure. Additionally, applicant’s services originate in the place named in the mark. Thus, a services-place connection between the services being provided and the geographic place is presumed.
Therefore, because all three prongs of the test have been met, the mark is primarily geographically descriptive under Section 2(e)(2) of the Trademark Act and registration on the Principal Register is refused.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
/Josh Galante/
Joshua M. Galante
Trademark Examining Attorney
Law Office 127
571-272-4310
Josh.Galante@uspto.gov
RESPONSE GUIDANCE