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:  October 02, 2019

 

 

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

 

 

SUMMARY OF ISSUES

 

• Section 2(e)(2) Refusal – Mark is Primarily Geographically Descriptive
• Advisory: Supplemental Register
• Request for Information Requirement

 

 

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).

 

However, the applied-for mark is refused registration on other grounds.

 

 

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 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).

 

In this case, applicant seeks to register the mark “HUDSON SQUARE” (standard characters) for use in connection with “Vodka.”

 

First, the primary significance of the mark is a generally known place. The attached evidence from Wikipedia.org, NYTimes.com, UntappedCities.com, NYC.com, and Globest.com shows that “Hudson Square” is a generally known neighborhood in Lower Manhattan in New York City.

 

Second, the goods originate in the geographic place identified in the mark. 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 JT Tobacconists, 59 USPQ2d 1080, 1083 (TTAB 2001) (holding applicant’s cigars, cigar cases, and humidors originated from MINNESOTA because they were packaged and shipped from MINNESOTA, and applicant’s business was located in MINNESOTA); In re Nantucket Allserve Inc., 28 USPQ2d 1144, 1145-46 (TTAB 1993) (holding applicant’s beverages originated from NANTUCKET because labels for applicant’s goods suggested a connection with NANTUCKET, additional evidence suggested that some ingredients came from NANTUCKET and that applicant’s goods were sold at applicant’s store located in NANTUCKET, and applicant’s corporate headquarters and research and development center were located in NANTUCKET); TMEP §1210.03. A product that is produced near the geographic place named in the applied-for mark is also sufficient to support a finding that the goods 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"). In the present case, the evidence of record shows that applicant’s address is 20.5 miles from Hudson Square. See attached. Therefore, applicant’s goods are considered to originate in Hudson Square.

 

Finally, 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 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). As explained above, the primary significance of the mark is its geographic significance, Hudson Square, a neighborhood in New York City. The attached evidence shows that Hudson Square is neither obscure nor remote. In addition, applicant’s goods originate in Hudson Square. Therefore, purchasers would be likely to make a goods-place association, i.e., consumers would likely believe that applicant’s vodka originates in Hudson Square.

 

Based on the foregoing, the applied-for mark is refused registration pursuant to Trademark Act Section 2(e)(2) for being primarily geographically descriptive. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

 

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.

 

 

REQUEST FOR INFORMATION REQUIREMENT

 

Applicant must provide a written statement specifying where the goods will come from or will originate.  See 37 C.F.R. §2.61(b); TMEP §§814, 1210.03.  In addition, apply must specify whether the goods will be manufactured, packaged, shipped from, sold 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.

 

 

RESPONSE GUIDELINES

 

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 or requirement 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.  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  

 

 

/Jacquelyn A. Jones/

Jacquelyn A. Jones

Examining Attorney

Law Office 120

571-272-4432

jacquelyn.jones@gmail.com

 

 

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 October 02, 2019 for

U.S. Trademark Application Serial No. 88506371

 

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. 

 

 

/Jacquelyn A. Jones/

Jacquelyn A. Jones

Examining Attorney

Law Office 120

571-272-4432

jacquelyn.jones@gmail.com

 

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 October 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.”