NOTE TO THE FILE
SERIAL NUMBER: 90021571
DATE: 09/07/2020
NAME: ssettles
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:
From: Lewis, Shaila E.
Sent: Monday, September 7, 2020 8:24 PM
To: trademarks@scotts.com
Subject: U.S. PATENT AND TRADEMARK OFFICE COMMUNICATION REGARDING U.S. APPLICATION NO. 90021571 (AUSTIN BARK)
Dear Mr. Morgan,
I am the examining attorney reviewing the above-referenced trademark application on behalf of the U.S. Patent and Trademark Office. I have reviewed the application and determined that a disclaimer of “AUSTIN” is required because it is geographically descriptive. Because the goods will be sold in Austin, Texas, a well-known geographic location in the United States, it must be disclaimed.
Goods are considered to originate from a geographic location when the record shows that the goods are sold there, manufactured or produced there, packaged and shipped from there, and/or contain a main ingredient or component derived from there. See In re Jacques Bernier Inc., 894 F.2d 389, 391-92, 13 USPQ2d 1725, 1727 (Fed. Cir. 1990), opposition sustained sub nom. Fred Hayman Beverly Hills, Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691 (TTAB 1996) (holding applicant’s perfume did not originate from RODEO DRIVE because, although goods did not have to be manufactured or produced at the geographic site and could “be sold there” to originate from the geographic location, there was insufficient evidence to show that perfume was sold on RODEO DRIVE); In re Joint-Stock Co. “Baik,” 80 USPQ2d 1305, 1310 (TTAB 2006) (holding applicant’s vodka originated from BAIKALSKAYA, a Russian word meaning “from Baikal,” because it was made from the water of Lake Baikal and applicant produced various vodkas from a location near Lake Baikal); In re JT Tobacconists, 59 USPQ2d 1080, 1083 (TTAB 2001) (holding applicant’s cigars, cigar cases, and humidors originated from MINNESOTA because they were packaged and shipped from MINNESOTA, and applicant’s business was located in MINNESOTA); In re Nantucket Allserve Inc., 28 USPQ2d 1144, 1145-46 (TTAB 1993) (holding applicant’s beverages originated from NANTUCKET because labels for applicant’s goods suggested a connection with NANTUCKET, additional evidence suggested that some ingredients came from NANTUCKET and that applicant’s goods were sold at applicant’s store located in NANTUCKET, and applicant’s corporate headquarters and research and development center were located in NANTUCKET); TMEP §1210.03.
A disclaimer does not physically remove the words from the mark, but would add the following statement to the registration: No claim is made to the exclusive right to use “AUSTIN” apart from the mark as shown.
If you would like to have the changes entered by examiner's amendment, please let me know on or before September 10, 2020. If you have any questions, feel free to call or email.
Kind regards,
Shaila E. Lewis
Trademark Examining Attorney
Law Office 114
(571) 270-1527 (phone)
(571) 270-2527 (fax)