To: | Vitaquest International LLC (dstadlin@vitaquest.com) |
Subject: | U.S. Trademark Application Serial No. 88777770 - GARDEN STATE NUTRITIONALS - N/A |
Sent: | April 28, 2020 11:33:00 AM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88777770
Mark: GARDEN STATE NUTRITIONALS
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Correspondence Address:
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Applicant: Vitaquest International LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: April 28, 2020
SEARCH OF USPTO DATABASE OF MARKS
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 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, located in West Caldwell, New Jersey, has applied for the mark GARDEN STATE NUTRITIONALS in standard characters for use in connection with dietary and nutritional supplements in Class 5.
The term GARDEN STATE is a widely-recognized nickname for NEW JERSEY, which is a generally known geographic location being a state of the east-central United States with a population of over 8,800,000 people. See attached excerpts from http://www.census.gov/quickfacts/fact/table/NJ/PST045219#PST045219 and http://www.ahdictionary.com/word/search.html?q=New%20Jersey. 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”). See attachments from http://www.state.nj.us/nj/about/facts/nickname/ showing the history of the term GARDEN STATE as the state nickname of New Jersey as well as from http://www.worldlicenseplates.com/usa/US_NJXX.html showing the term GARDEN STATE on New Jersey license plates. In addition, applicant’s goods originate in the GARDEN STATE, because applicant’s address indicates that it is located in New Jersey.
The fact that applicant’s mark also contains additional wording does not diminish the overall geographic significance of the mark. In this case, NUTRITIONALS is descriptive of or generic for applicant identified goods, “dietary and nutritional supplements.” The attached excerpts from websites of supplement retailers and manufacturers show that the term NUTRITIONALS is commonly used in a descriptive or generic manner in connection with such goods. See attached evidence from:
Moreover, the attached third-party registrations for marks used in connection with dietary and nutritional supplements provide further support for the conclusion that the term NUTRITIONALS is descriptive or generic for such goods. Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Therefore, because the applied-for mark is primarily geographically descriptive of the origin of applicant’s goods, registration is refused pursuant to Section 2(e)(2) of the Trademark Act.
Response to Section 2(e)(2) Refusal – Primarily Geographically Descriptive
Advisory – Applicant Can Amend to the Supplemental Register after Filing an Amendment to Allege Use
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.
Advisory – Amendment to Supplemental Register Will Require Disclaimer of Generic Wording
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “NUTRITIONALS” 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.
INFORMATION REQUIRED ABOUT WHERE APPLICANT’S GOODS WILL ORIGINATE
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
How to respond. Click to file a response to this nonfinal Office action.
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.
Theodore Sotland
/Theodore Sotland/
Trademark Examining Attorney
Law Office 105
571-270-0864
Theodore.Sotland@USPTO.gov
RESPONSE GUIDANCE