United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88821483
Mark: THE ORIGINAL CALIFORNIA ARTICHOKE
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Correspondence Address:
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Applicant: Luis A. Scattini & Sons LP
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Reference/Docket No. LGT3096
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 16, 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 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 originate in the place identified in the mark; and
(3) The purchasing public would be likely to believe that the goods originate in the geographic place identified in the mark; that is, to make a goods-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 attached evidence from columbiagazetteer.org and wikipedia.org shows that “CALIFORNIA” is a generally known location; namely, a state in the Pacific Region of the United States.
In the present case, the term “THE ORIGINAL” is highly descriptive and the term “ARTICHOKE” is generic and thus this wording does not diminish the geographic word’s primary geographic significance.
“Marks that are merely laudatory and descriptive of the alleged merit of a product [or service] are . . . regarded as being descriptive” because “[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); TMEP §1209.03(k).
The Trademark Trial and Appeal Board has held that the word “ORIGINAL” used alone or paired with descriptive wording is merely laudatory and descriptive of goods being the first of their kind. See In re Ervin, 1 USPQ2d 1665, 1666 (TTAB 1986) (holding THE “ORIGINAL” merely laudatory and descriptive of applicant’s scorer for playing euchre as the first of its kind); Gen. Foods Corp. v. Ralston Purina Co., 220 USPQ 990, 994 (TTAB 1984) (holding ORIGINAL BLEND merely laudatory and descriptive of applicant’s cat food comprising a first-of-its-kind combination of ingredients). The attached evidence from lexico.com shows that “ORIGINAL” means “Present or existing from the beginning; first or earliest” and, similarly, the attached evidence from merriam-webster.com shows that “ORIGINAL” means “being the first instance or source from which a copy, reproduction, or translation is or can be made”. Therefore, the term “ORIGINAL” is merely laudatory and highly descriptive of applicant’s goods being the first of their kind.
The attached evidence from collinsdictionary.com shows that “ARTICHOKE” means “round green vegetables that have fleshy leaves arranged like the petals of a flower” and, similarly, the attached evidence from macmillandictionary.com shows that “ARTICHOKE” means “a round green vegetable with thick pointed leaves arranged close together in layers. After cooking it, you pull off each leaf and eat the soft bottom part”. Therefore, the term “ARTICHOKE” is generic for applicant’s goods of “Fresh vegetables, namely, artichokes”.
Therefore, the term “THE ORIGINAL” is highly descriptive and the term “ARTICHOKE” is generic and thus this wording does not diminish the geographic word’s primary geographic significance.
In consideration of the foregoing, the applied-for mark is refused because it is merely geographically descriptive.
Advisory – Supplemental Register
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.
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “ARTICHOKE” 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 About the Goods Requirement
Entity Information Requirement
The following format should be used:
“_____________________, a limited partnership organized under the laws of _______________, composed of _______________ (specify name, legal entity, and citizenship of each individual general partner; and/or name, legal entity, and state or foreign country of incorporation or organization of each juristic general partner).”
TMEP §803.03(b).
Response Guidelines
For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
Snabb, Sandra
/Sandra Snabb/
Examining Attorney
Law Office 120
571-272-4633
Sandra.Snabb@uspto.gov
RESPONSE GUIDANCE