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:  June 05, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on May 20, 2020.

 

In a previous Office action dated November 21, 2019, the applied-for mark was refused registration pursuant to Section 2(e)(2) because the applied-for mark is primarily geographically descriptive in the context of the applicant’s goods and services.  Applicant was also required to satisfy the following requirements:  amend the identification of goods and services, and clarify the mark description.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: a definite amended identification was provided and the mark description has been clarified.  See TMEP §§713.02, 714.04. 

 

Upon further review, the trademark examining attorney maintains and now makes FINAL the requirement 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:

 

• Section 2(e)(2) Refusal – Primarily Geographically Descriptive
• Supplemental Register Not Available Advisory

 

I.                   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 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 to the purchasing public is a generally known location;

 

(2)        The goods or services originate in the place identified in the mark; and

 

(3)        The purchasing public would be likely to believe that the goods or services originate in the geographic place identified in the mark; that is, to make a goods-place or services-place association.

 

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); see also In re Newbridge Cutlery Co., 776 F.3d 854, 860-61, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015). 

 

Applicant seeks to register the mark “LA” in stylized form for use in connection with: “Clothing, namely, tops and bottoms as clothing; headwear; sports caps and hats; t-shirts; shirts; sweatshirts; shorts; tank tops; sweaters; pants; jackets; golf shirts; knit shirts; jerseys; wristbands as clothing; warm up suits; gloves; ties as clothing; cloth bibs; sleepwear, namely, bathrobes and pajamas; underwear; socks; footwear, namely, sneakers, slippers, flip flops; scarves; bandannas; swimwear; Halloween and masquerade costumes” and “Entertainment services in the nature of professional football games and exhibitions; providing sports and entertainment information via a global computer network, mobile applications, commercial on-line computer service or by cable, satellite, television and radio; arranging and conducting athletic competitions, namely, professional football games; production and distribution of radio and television programs in the field of sports; entertainment services in the nature of live shows featuring football games, organizing live exhibitions, competitions, and live musical and dance performances; organizing sports competitions in the nature of sporting activities, namely, football skills competitions and football showcases; distribution of television programming to cable and satellite television systems; distribution of television programs for others; entertainment services, namely, providing online electronic games; football fan club services; providing a web site featuring sports news and entertainment news; Entertainment services in the nature of a fantasy football game”.

 

Commonly used nicknames for geographic locations are generally treated as equivalent to the proper geographic name of the place identified.  TMEP §1210.02(a); see, e.g., In re Carolina Apparel, 48 USPQ2d 1542, 1543 (TTAB 1998) (holding CAROLINA APPAREL primarily geographically descriptive where evidence showed “Carolina” is a nickname for either North or South Carolina); In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 245 (TTAB 1976) (holding OLD DOMINION is “the accepted nickname for the State of Virginia”).  Here, the attached evidence establishes that “LA” is a commonly used nickname or abbreviation for Los Angeles

 

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 Jacques Bernier Inc., 894 F.2d 389, 391-92, 13 USPQ2d 1725, 1727 (Fed. Cir. 1990), opposition sustained sub nom. Fred Hayman Beverly Hills, Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691 (TTAB 1996) (holding applicant’s perfume did not originate from RODEO DRIVE because, although goods did not have to be manufactured or produced at the geographic site and could “be sold there” to originate from the geographic location, there was insufficient evidence to show that perfume was sold on RODEO DRIVE); In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305, 1310 (TTAB 2006) (holding applicant’s vodka originated from BAIKALSKAYA, a Russian word meaning “from Baikal,” because it was made from the water of Lake Baikal and applicant produced various vodkas from a location near Lake Baikal); 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.

 

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.

 

A prima facie showing that the public would reasonably associate applicant’s goods and/or services with the geographic place named in the applied-for mark is generally sufficient to support a refusal.  See In re Loew’s Theatres, Inc., 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985).  The named geographic location in the mark need not be well known or noted for the goods and/or services.  See TMEP §§1210.04, 1210.04(a); see, e.g., In re Loew’s Theatres, Inc., 769 F.2d at 767-768, 226 USPQ at 867-868; In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1707 (TTAB 1988).

 

In this case, the attached evidence from XFL, Wikipedia, Los Angeles Magazine, and LA ist and the previously attached evidence from the various dictionaries and Columbia Gazetteer combined with the evidence from XFL News Hub establishes that the primary significance of the wording “LA” in applicant’s mark is a nickname or reference to the well-known city of Los Angeles.  Additionally, the attached industry website evidence shows that the applicant’s goods and services will originate in Los Angeles.  The USPTO has long held that a goods-place or services-place association is presumed where (1) the location in the mark is generally known to the purchasing public, (2) the term’s geographical significance is its primary significance, and (3) the goods and/or services do, in fact, originate from the named location in the mark.  TMEP §1210.04; see, e.g., In re Cal. Pizza Kitchen Inc., 10 USPQ2d 1704, 1705 (TTAB 1988) (finding a services-place association was presumed between applicant’s restaurant services and California because the services originated in California); In re Handler Fenton Ws., Inc., 214 USPQ 848, 850 (TTAB 1982) (finding a goods-place association was presumed between applicant’s t-shirts and Denver because the goods had their geographical origin in Denver); see also In re Nantucket, Inc., 677 F.2d 95, 102, 213 USPQ 889, 895 (C.C.P.A. 1982) (Nies, J., concurring) (“[W]e must start with the concept that a geographic name of a place of business is a descriptive term when used on the goods of that business.  There is a public goods/place association, in effect, presumed.” (internal footnote removed)). 

 

Applicant contends in the response that “any geographic meaning of the term “LA” is secondary to” the stylization of the wording and that any doubt should be resolved in favor of the applicant.  To support its position the applicant cites to a 1976 case with a unique set of facts wherein the acronym “JH” was determined to have a non-descriptive meaning in the context of the overall “JACKSON HOLE” mark.  In re Jackson Hole Ski Corp., 190 USPQ 175, 176 (TTAB 1976).  However, it is well settled that each case must be decided on its own facts and the Trademark Trial and Appeal Board is not bound by prior decisions involving different records.  See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a).  The question of whether a mark is merely descriptive or primarily geographically descriptive is determined based on the evidence of record at the time each registration is sought.  In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing In re Nett Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566); TMEP §§1209.03(a), 1210.04 et seq.  Additionally, the holding from In re Jackson Hole Ski Corp. is not binding here since the facts here are distinguishable; contrary to the record in the cited case, the present record clearly establishes that the acronym “LA” itself is geographically descriptive in relation to the goods and services.  Second, even in the In re Jackson Hole case, the applicant was required to provide a disclaimer for the geographically descriptive wording “JACKSON HOLE” and only allowed to register on the Principal Register due to the composite nature of the letters “JH”.  Additionally, here the letters in applicant's mark are not arranged in a manner that creates a separate and inherently distinctive commercial impression similar to the "JH" monogram, they are merely stylized letters that are juxtaposed in their typical order.  Though the letters may have some almost interlocking features, this alone is insufficient to create a separate impression from the two letters comprising the mark “LA”.  See e.g. In re United States of America Supplements, LLC, 2018 BL 371258 (T.T.A.B. 2018); In re Rainier Fruit Company, Serial No. 86108344, 2015 BL 342917 (T.T.A.B. 2015); In re VOX Media Inc., Serial No. 85085395, (T.T.A.B. 2013); In re Sadoru Group, Ltd., Serial No. 77941164, 105 U.S.P.Q.2d 1484, (T.T.A.B. 2012).

 

Adding stylization to descriptive or generic wording does not render the resulting mark registrable on the Principal Register unless the stylization creates a commercial impression separate and apart from the impression made by the wording itself, or the applicant can otherwise show by evidence that the particular stylized display has acquired distinctiveness. See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-1640 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §§1209.03(w).  Moreover, the literal element as presented in the mark is geographically descriptive in such a manner that the geographic meaning of the letters “LA” is retained and would be perceived as indicating the origin of the applicant’s goods and services.  See also U.S. Registration No. 4472857, 2160298, 2288127, 2241112, and 3479595 (showing examples of similar “LA” design or stylized marks where the acronym “LA” had to be disclaimed or the mark registered on the Supplemental Register due to the primarily geographically descriptive nature of the wording).  As such, contrary to the applicant’s assertion, there is no doubt to be resolved in favor of the applicant since the evidence clearly establishes that the mark at issue is primarily geographically descriptive.  Accordingly, the applicant’s arguments are unpersuasive and the Section 2(e)(2) refusal is continued and made FINAL.

 

Accordingly, considering all of the above-referenced factors, the applied-for mark must be refused on the Principal Register under Section 2(e)(2) of the Trademark Act since the applied-for mark is primarily geographically descriptive.

 

II.                SUPPLEMENTAL REGISTER NOT AVAILABLE FOR SECTION 1(b) APPLICATIONS ADVISORY

 

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not yet 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 registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages to the registrant:

 

(1)        Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.

 

(2)        Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.

 

(3)        Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.

 

(4)        Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.

 

(5)        Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.

 

See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).

 

To amend the application to the Supplemental Register, applicant must provide a written statement requesting that the application be amended to the Supplemental Register after filing an amendment to allege use, as noted above.  TMEP §816.01; see 15 U.S.C. §1091; 37 C.F.R. §2.47.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

/Amer Raja/

Amer Raja

Examining Attorney

Law Office 121

(571) 270 5936

amer.raja@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 June 05, 2020 for

U.S. Trademark Application Serial No. 88585803

 

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. 

 

 

/Amer Raja/

Amer Raja

Examining Attorney

Law Office 121

(571) 270 5936

amer.raja@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 June 05, 2020, 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.”