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: August 14, 2020
This application was approved for publication on Jun 11, 2020.
See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue(s) below. See TMEP §706.01. The trademark examining attorney apologizes for any inconvenience this may cause
applicant.
Upon further review the office reinstates the 2(e)(2) refusal for the reasons stated below.
GEOGRAPHICALLY DESCRIPTIVE 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 prosed marks is AMERICAN ETHICAL SUPPLEMENTS and the goods are identified a “dietary and nutritional supplements.”
American is defined as “of or relating to America.” http://www.merriam-webster.com/dictionary/American See attachments to 5/5/2020 office action.
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).
The attached articles from a search of the Internet show that “ethical supplements” is a term of art used in the industry to immediately describe the applied for supplements as
being produced with certain ethical standards. For example:
The brands we carry go through stringent testing by third party laboratories to verify their quality and purity. We believe in
providing our community with ethical supplements and vitamins. http://www.clarkspharmacywa.com/nutritional-supplements
Whole-food, ethical supplements are the new innovation frontier. The new supplements trend is to source from whole-food
ingredients. http://www.newhope.com/vitamins-and-supplements/whole-food-ethical-supplements-are-new-innovation-frontier
The Good Shopping Guide names Viridian Top for Ethical Vitamins. Viridian was been re-awarded full Ethical Accreditation following an
audit by The Ethical Company Organisation(ECO), where it retained its Ethical Company Index score of 100 - the highest score possible.
The ECO’s ethical web comparison site Thegoodshoppingguide.com reveals the good, the bad, and the ugly of the world’s companies and
brands, assisting consumers in choosing more eco-friendly, ethical products that support the growth of social responsibility and ethical business as well as a more sustainable, just
society. http://www.viridian-nutrition.com/blog/news/the-good-shopping-guide-names-viridian-top-for-ethical-vitamins
The brands we carry go through stringent testing by third party laboratories to verify their quality and purity. We believe in
providing our community with ethical supplements and vitamins. This means we only carry the best products that will support your health and lifestyle. http://www.kuslerspharmacy.net/natural-health.htm
The applicant argues, “the word ‘ETHICAL’ cannot describe the behavior of ‘supplements’ because supplements do not have a behavior, which is ethical or others.” The office respectfully disagrees. The evidence of record shows that the term “ethical supplements” is a term of art in the supplement
industry and does not alter the overall geographic significance of the mark as a whole.
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.
ADDITIONAL INFORMATION REQUIRED
To permit proper examination of the application, applicant must submit additional product
information about applicant’s goods. See 37 C.F.R. §2.61(b); TMEP §814. The requested product information
should include fact sheets, instruction manuals, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for goods
of the same type, explaining how its own product will differ. If the goods feature new technology and no competing goods are available, applicant must provide a
detailed description of the goods.
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of
trade. Conclusory statements regarding the goods will not satisfy this requirement. In addition, the applicant must specify whether
the applicant’s goods will meet ethical accreditation standards of the vitamin and supplement industry.
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. Merely stating that information about the goods is available on applicant’s website is an insufficient response and
will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
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.
