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:  March 26, 2020

 

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.

 

Search of Office’s Database of Marks

 

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

 

Summary of Issues

·         Section 2(e)(2 ) Refusal: Mark is Primarily Geographically Descriptive

·         Supplemental Register Advisory

 

Section 2(e)(2 ) Refusal: 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).

 

Applicant’s Mark is:

• JEJU VOLCANIC MINERAL WATER for:
• • Class 32: Water beverages; bottled drinking water

 

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).

 

Here, the primary significance of the mark to the purchasing public is a generally known location. This is shown in the attached evidence from the CNN Travel, Wikipedia and Science Daily websites. These sources show that the Jeju island, located in South Korea, is a world famous tourism spot known for being an active volcano.

 

Further, the goods originate in the place identified in the mark.  This is shown in the attached evidence from the Korea JoongAng Daily website, which explains that applicant’s goods are filtered through “Jeju” basalt, and from the IF World Design Guide website, which explains that “[t]he Orion Corp. has launched a high-concentration mineral water from the Jeju volcanic island of South Korea.”

 

Lastly, 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. 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)). Here, the previously referenced evidence shows that “JEJU” is a generally known to the purchasing public, that the term’s geographical significance is its primary significance, and that the goods do originate in the place named in the mark. Thus, the association is presumed.

 

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). Here, “VOLCANIC” is descriptive in that Jeju Island is an active volcano, as shown in the previously referenced evidence. The Korea JoongAng Daily website explains that applicant’s goods are in fact, filtered through “volcanic” basalt from Jeju. Further, the attached evidence from the Korea JoongAng Daily website explains that the water applicant provides is a “mineral water”. Further, the attached evidence from the Bon Appetit website, shows that “mineral water” is a type of water. Applicant provides “water beverages”, so “mineral water” is descriptive of the type of water applicant provides.

 

In light of the foregoing, it is evident that applicant’s mark is primarily geographically descriptive in relation to applicant’s goods. Applicant is welcome to provide arguments in support of registration, but must still consider the issues below.

 

Supplemental Register Advisory

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended 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 the amendment to allege use.  TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b).

 

• Generic Advisory

 

Applicant is advised that, if the application is amended to seek registration on the Principal Register under Trademark Act Section 2(f) or on the Supplemental Register, applicant will be required to disclaim “MINERAL WATER” 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 “MINERAL WATER” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

Response to Office Action

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

(571) 270-5984

Amanda.Rosen@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 March 26, 2020 for

U.S. Trademark Application Serial No. 88739588

 

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. 

 

 

Rosen, Amanda

/Amanda Rosen/

Examining Attorney

Law Office 121

(571) 270-5984

Amanda.Rosen@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 March 26, 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.”