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:  April 28, 2020

 

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 USPTO 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 – Primarily Geographically Descriptive
• Information Required About Where Applicant’s Goods Will Originate

 

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, 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 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)). Thus, in this case, because the evidence demonstrates that the primary significance of GARDEN STATE is the generally known geographic location of New Jersey, and the goods originate in this location, the goods-place association is established.

 

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:

• http://www.tomorrowsbody.com/nutrition/
• http://medsitis.com/collections/nutritionals
• http://www.wachters.com/access.php?h=Data/aboutus
• http://www.lifetime-weightloss.com/blog/2013/2/6/life-time-products-new-formulas-new-looks-and-best-in-class.html
• http://www.bscg.org/certified-drug-free-supplements/ 

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).

 

Generally, 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).

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

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

Advisory – Applicant Can Amend to the Supplemental Register after Filing an Amendment to Allege Use

Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal(s), 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.

Advisory – Amendment to Supplemental Register Will Require Disclaimer of Generic Wording

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 “NUTRITIONALS” 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 “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

Applicant must provide a written statement specifying where the goods and/or services will come from or will originate.  See 37 C.F.R. §2.61(b); TMEP §§814, 1210.03. 

 

In addition, Applicant must provide a written statement explaining 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

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

 

Theodore Sotland

/Theodore Sotland/

Trademark Examining Attorney

Law Office 105

571-270-0864

Theodore.Sotland@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.