To: | Rodriguez, Andres (docketing@kb-ip.com) |
Subject: | U.S. Trademark Application Serial No. 97201611 - BANDAS Y TROCAS - 14956.26 |
Sent: | August 14, 2022 10:43:54 AM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 97201611
Mark: BANDAS Y TROCAS
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Correspondence Address:
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Applicant: Rodriguez, Andres
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Reference/Docket No. 14956.26
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.
• Primarily Geographically Descriptive Refusal
• Goods Place Statement Required
• Required Amendment to Disclaimer Statement
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.
See Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324, at *5 (TTAB 2020) (citing In re Nantucket, Inc., 677 F.2d 95, 96-97, 213 USPQ 889, 891 (C.C.P.A. 1982)); see also In re Newbridge Cutlery Co., 776 F.3d 854, 860-61, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015); 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 JT Tobacconists, 59 USPQ2d 1080, 1081 (TTAB 2001)); TMEP §1210.01(a).
In total, the applied-for mark is a geographic composite mark composed of geographic matter coupled with merely descriptive matter. TMEP §1210.06. The design in the mark is of the state of Texas, which is primarily geographically descriptive of the origin of the applicant’s entertainment services.
Further, applicant's social entertainment events feature both bands (musical groups) and trucks. See, applicant's specimen. All of the wording in the mark, "BANDAS Y TROCAS", is therefore descriptive. When the applied-for mark is viewed as a whole, it is primarily geographically descriptive under §2(e)(2) and should be refused, accordingly.
The examining attorney has attached an online dictionary definition of Texas to demonstrate the terms geographic significance. See attachment.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
GOODS PLACE STATEMENT
To permit proper examination of the application, applicant must provide a written statement specifying where the goods and/or services will come from or will originate. See 37 C.F.R. §2.61(b); TMEP §§814, 1210.03. Applicant has a duty to respond directly and completely to this requirement for information. See In re Ocean, Tech., Inc., 2019 USPQ2d 450686, at *2 (TTAB 2019) (citing In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013)); TMEP §814. Failure to comply with a requirement for information is an independent ground for refusing registration. In re SICPA Holding SA, 2021 USPQ2d 613, at *6 (TTAB 2021) (citing In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814).
DISCLAIMER AMENDMENT REQUIRED
The applicant added the disclaimer for TROCAS in response to the examiner’s requirement for disclaimer in the office action dated, May 19, 2022. Upon further review of the applicant’s submitted specimens, the examiner is requiring that applicant add the descriptive wording, BANDAS, to the disclaimer statement, as it describes the musical groups that are a part of the applicant’s entertainment services.
The attached evidence from Collins online dictionary shows that “BANDAS” means, a small group of musicians who play popular music such as jazz, rock, or pop. See attachments.
Thus, the wording described an aspect of the applicant’s entertainment services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BANDAS” apart from the mark as shown.
TMEP §§1213.03(c), 1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
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.
/C. Dionne Clyburn/
C. Dionne Clyburn
Trademark Examining Attorney
LO 110
571-272-9358
dionne.clyburn@uspto.gov
RESPONSE GUIDANCE