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: May 05, 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.
NO CONFLICTING 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.
GEOGRAPHICALLY DESCRIPTION 2(e)(2)
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).
The proposed mark is AMERICAN ETHICAL SUPPLEMENTS and the goods are identified as “dietary and nutritional supplements.”
American is defined as “of or relating to America.” http://www.merriam-webster.com/dictionary/American
If the most prominent meaning or significance of a mark is geographic for the goods and/or
services in the application, the fact that the mark may have other meanings in other contexts does not alter its geographic significance in the context of the application. See In re Opryland USA Inc., 1 USPQ2d 1409, 1412-13 (TTAB 1986) (holding the mark THE NASHVILLE NETWORK primarily geographically descriptive of television
program production and distribution services when finding that the primary significance of the term referred to Nashville, Tennessee and not that of a style of music); In re Cookie
Kitchen, Inc., 228 USPQ 873, 874 (TTAB 1986) (noting that where MANHATTAN refers to a type of cocktail and to a geographic location that having an alternative meaning does not alter the mark’s
primary geographic significance in the context of the goods in the application); In re Jack’s Hi-Grade Foods, Inc., 226 USPQ 1028, 1029 (TTAB 1985) (noting that where NEAPOLITAN
refers to a type of ice cream and also means “pertaining to Naples, Italy” that having an alternative meaning does not alter the mark’s primary geographic significance in the context of the goods in
the application); TMEP §1210.02(b)(i).
Adding matter to a geographic term does not necessarily diminish its
primary geographic significance. See In re Wada, 194 F.3d 1297, 1300, 52 USPQ2d 1539, 1541 (Fed. Cir. 1999); In re S. Park Cigar,
Inc., 82 USPQ2d 1507, 1513 (TTAB 2007). In some cases, additional matter may even serve to enhance the geographic significance.
See In re Premiere Distillery, LLC, 103 USPQ2d 1483, 1485 (TTAB 2012) (holding REAL RUSSIAN primarily geographically deceptively misdescriptive of vodka);
In re Bacardi & Co., 48 USPQ2d 1031, 1034 (TTAB 1997) (holding HAVANA SELECT, HABANA CLASICO, OLD HAVANA, HAVANA PRIMO, and HAVANA CLIPPER primarily geographically
deceptively misdescriptive of rum and other alcoholic products).
Ethical is defined as “conforming to accepted standards of conduct.” http://www.merriam-webster.com/dictionary/ethical Supplement is defines as “dietary supplement.” http://www.merriam-webster.com/dictionary/supplements The applicant is using the mark
in connection with dietary supplements which conform to acceptable standards of conduct which is merely descriptive of the applicant’s goods.
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.”
To establish a goods-place association, the trademark examining attorney’s evidence need
only show a “reasonable basis” for concluding that the public is likely to believe that the mark identifies the place from which the services originate. See In re JT Tobacconists, 59 USPQ2d 1080, 1083-84 (TTAB 2001) (finding that nothing in the record suggested that it would be incongruous or unexpected for the purchasing public to
believe that applicant’s cigars, cigar cases and humidors, “manufactured products which could have their origin practically anywhere,” came from the place named in the mark, as applicant was located
in the place and the goods were packaged and shipped from the location, such that consumers would have a reasonable basis to believe the goods came from the place named in the mark); In re Cambridge Digital Sys., 1 USPQ2d 1659, 1661-62 (TTAB 1986) (finding that the location named in the mark was renowned for educational institutions and the record demonstrated the
location was a manufacturing and commercial center producing related goods such that purchasers of applicant’s goods would reasonably believe they emanate from the place named in the mark); see also TMEP §1210.04; In re Loew’s Theatres, Inc., 769 F.2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985).
In this case, the applicant’s address of record is located in the United States. The primary significance of the AMERICAN is a geographic place,
and the applicant’s goods originate in that place. Therefore, a goods-place public association is presumed, and the mark is primarily geographically
descriptive.
When viewed in its entirety the proposed mark merely describes the geographic location of the applicant’s services. Accordingly the mark is
refused under Section 2(e)(2).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth
below.
SUPPLEMENTAL REGISTER
The applied-for mark has been refused registration on the Principal Register.
Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register. See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816. Amending to the Supplemental Register does not preclude
applicant from submitting evidence and arguments against the refusal(s). TMEP §816.04.
DISCLAIMER
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 “SUPPLEMENTS” 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 “SUPPLEMENTS” 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.
How to respond. Click to file a response to this nonfinal Office action.
/Jennifer M. Martin/
Jennifer M. Martin
Examining Attorney
Law Office 116
(571) 272-9193
Jennifer.Martin@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.
