To: | Erie Photography (info@erie-photography.com) |
Subject: | U.S. Trademark Application Serial No. 90700505 - ERIEPICS - N/A |
Sent: | February 10, 2022 08:29:45 PM |
Sent As: | ecom101@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90700505
Mark: ERIEPICS
|
|
Correspondence Address:
|
|
Applicant: Erie Photography
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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: February 10, 2022
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
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 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 term “ERIE” is geographically descriptive of the origin of the applicant’s services. The applicant’s address is in Erie, Pennsylvania. See http://www.merriam-webster.com/dictionary/Erie. The applicant’s website shows that the services are offered “in Erie PA.” http://erie-pics.com/.
The Office generally treats “PICS” or its singular form as descriptive/generic matter in the context of photography services. See, e.g., RNs. 6017012, 5273106, 4810623, and 2899150. Thus, the addition of this generic or highly descriptive word to the geographic word does not diminish that geographic word or term’s primary geographic significance. TMEP §1210.02(c)(ii).
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
How to respond. Click to file a response to this nonfinal Office action.
/Jacqueline Abrams/
Examining Attorney LO 101
(571) 272-9185
United States Patent and Trademark Office
jacky.abrams@USPTO.gov (INFORMAL ONLY)
RESPONSE GUIDANCE