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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`SERIAL NO:
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`78/222332
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`CORRESPONDENT ADDRESS:
`Nadine Flynn
`Bristol -Myers Squibb Company
`345 Park Avenue
`New York NY 10154
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`3'
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`0 (
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`lllllllllllllllllllllllllllllllllllllllllllll
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`BEFORE THE
`TRADENIARK TRIAL
`AND APPEAL BOARD
`ON APPEAL
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`MARK:
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`PRINCETON PHARMACEUTICAL PRODUCTS
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`CORRE SPONDENT’S REFERENCE/DOCKET N0: N/A
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`P'°35° P"°Vld° in 3" °°”°SP°“d°“°°3
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`CORRESPONDENT EMAIL ADDRESS:
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`1. Filing date, serial number, mark and
`applicant's name.
`2. Date of this Office Action.
`3. Examining AILomey’s name and
`Law Office number.
`4. Your telephone number and e-mail
`address.
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`EXA1\/IINING ATTORNEY'S APPEAL BRIEF
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`Procedural History
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`Applicant applied to register the mark PRINCETON PHARMACEUTICAL PRODUCTS on
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`March 6, 2003, alleging a bonafide intention to use the mark in commerce in connection with a “house
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`mark for a line of pharmaceutical preparations” in International Class 5.
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`In the first Olfice action, dated
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`August 25, 2003, the assigned examining attorney refused registration under Section 2(e)(2) of the
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`Trademark Act on the grounds that the mark is primarily geographically descriptive of such goodsfll
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`By Final Action dated April 8, 2004, the undersigned maintained the refusal on geographic
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`descriptiveness. The applicant submitted a Request for Reconsideration together with its Appeal on
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`October 13, 2004. In an action dated November 4, 2004, the request was denied and this Appeal
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`resumed.
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`The sole issue on appeal
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`is whether PRINCETON PHARMACEUTICAL PRODUCTS is
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`Issue on Appeal
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`primarily merely geographically descriptive of a line of pharmaceutical preparations.
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`ARGUMENT
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`I.
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`Applicable Law
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`A three-part test is applied to determine whether a mark is primarily geographically descriptive of the
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`goods and/or services within the meaning of Trademark Act Section 2(e)(2):
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`(1)
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`the primary significance of the mark must be geographic, i.e., the mark names a particular
`geographic place or location;
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`(2) purchasers must be likely to make a goods-place or services-place association, i.e., purchasers
`are likely to think that the goods or services originate in the geographic location identified in the
`mark; and
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`(3)
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`the mark identifies the geographic origin of the goods and/or services.
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`TMEP §1210.01(a); See In re MCO Properties, Inc., 38 USPQ2d 1154 (TTAB 1995); In re California
`Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989).
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`II.
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`Applicant’s Mark is Primarily Geographically Descriptive of the Goods
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`A. The Primary Significance of the Mark is Geographic
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`The evidence of record shows that the primary significance of the term “PRINCETON” is
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`geographic. Such evidence includes a definition of “Princeton” as “a borough of central New Jersey.”
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`(The American Heritage Dictionary ofthe English Language, 41]‘ Ed., 2000.) When the geographic
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`significance of a term is its primary significance and the geographic place is neither obscure nor remote,
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`the goods/place or services/place association will ordinarily be presumed from the fact that the
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`applicant’s goods or services originate in the place named in the mark. In re JT Tobacconists, 59
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`USPQ2d 1080 (TTAB 2001) (MINNESOTA CIGAR COMPANY primarily geographically desciiptive
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`of cigars); In re Chalk ’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991) (PARADISE
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`ISLAND AIRLINES held primarily geographically descriptive of the transportation of passengers and
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`goods by air); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988) (CALIFORNIA
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`PIZZA KITCHEN held primarily geographically descriptive ofrestaurant services).
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`.
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`ApplicantarguesthatitsevidenceestablishedthattheassociationofPRINCETONwith
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`academics is of equal or greater significance than the established geographic significance. However, the
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`fact that a term may have other meanings in other contexts (such as academics) does not necessarily
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`negate the basis for refusal as long as the most prominent meaning or significance is geographic for the
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`identified goods. In re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986); In re Cookie Kitchen, Inc.,
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`228 USPQ 873 (TTAB 1986); TMEP §1210.02(b). That is, the fact that PRINCETON may identify a
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`university or other academic institutions does not diminish the geographic significance of the term.
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`Applicant has put forth In re Jacgues Bemier, Inc. and In re Jim Crockett Promotions, Inc. for the
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`proposition that some geographic terms do not stand as primarily geographic because of other more
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`prominent meanings. But unlike the marks RODEO DRIVE and THE GREAT AMERICAN BASH,
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`PRINCETON is primarily geographically descriptive in the context ofpharmaceutical products.
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`Applicant’s reliance on cases involving the term AMERICAN as analogous in this situation is
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`misplaced.
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`B. Purchasers are Likely to Make a Goods—Place Association
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`Purchasers must be likely to make a goods-place association, i.e., purchasers are likely to think
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`that the goods originate in the geographic location identified in the mark. Again, evidence of record
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`supports the goods-place association. See excerpt from applicant’s website (www.bms.com) and Lexis-
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`Nexis articles in which pharmaceutical products and applicant’s products specifically, are connected to
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`Princeton, New Jersey. That is, purchasers are likely to believe the applicant’s goods will originate in
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`1
`I
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`Princeton, for two reasons made clear in the record: (a) because applicant’s goods are researched and
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`developed in Princeton and (b) because Princeton is known for pharmaceutical products and
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`pharmaceutical companies. Again, the fact that applicant maintains other research facilities beyond
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`Princeton does not diminish the geographic significance or goods-place association for this mark in
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`connection with these goods.
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`C. The Mark Identifies the Geographic Origin of the Goods
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`Applicant has argued that because the pharmaceutical products to be sold under the subject mark
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`I
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`1
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`§
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`are not necessarily manufactured in Princeton, the mark does not identify the geographic origin of
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`the goods. However, as established by the evidence in the record, the applicant company is based in
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`Princeton and the development and research for the goods takes place in Princeton. The origin of the
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`goods can clearly be connected to Princeton. Again, the Lexis-Nexis articles of record along with the
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`results of a search using the Google search engine, indicate that applicant is headquartered in Princeton
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`and primary research facilities are based there.
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`D. The Addition of Generic Terms Does Not Obviate the Refusal
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`The addition of a generic or merely descriptive term to a geographic term does not obviate a
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`determination of geographic descriptiveness. See In re JT Tobacconists, 59 USPQ2d 1080 (TTAB
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`2001); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk ’s International Airlines
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`Inc., 21 USPQ2d l637('1TAB 1991); In re Wine Society ofAmerica Inc., 12 USPQ2d 1139 (TTAB
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`1989); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988); In re Cambridge Digital
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`Systems, 1 USPQ2d 1659 (TTAB 1986); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986); In re
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`Application ofHandler Fenton Westerns, Inc. 214 USPQ 848 (TTAB 1982); TMEP §12l0.07(a).
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`Evidence of record, together with the applicant’s description of the goods, confirms that
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`PHARMACEUTICAL PRODUCTS is essentially a generic phrase in this context and does nothing to
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`obviate the geographic descriptiveness of PRINCETON PHARMACEUTICAL PRODUCTS. See
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`definitions of generic tenns in record, from The American Heritage Dictionary ofthe English Language,
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`4th Ed., 2000.
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`E. Third-Party Registrations Not Conclusive
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`Applicant has provided a list of third-party registrations in its Brief to support the proposition
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`that the tenn PRINCETON is registrable without further evidence of distinctiveness on the Principal
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`Registenlgl The Trademark Trial and Appeal Board has often noted, however, that "each case must be
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`decided on its own merits. We are not privy to the records in the files of the cited registrations and,
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`moreover, the determination of registrability of particular marks by the Trademark Examining Groups
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`cannot control the result in another case involving a different mark." (In re Styleclick. com Inc., 57
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`USPQ2d 1445 (TTAB 2000), citing In re Nett Designs, Inc., 57 USPQ2d 1564 (Fed. Cir. 2001) ["Even
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`if some prior registrations had some characteristics similar to applicant's application, the PTO's
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`allowance of such prior registrations does not bind the Board or this court."].). See also, AMF Inc. v.
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`American Leisure Products, Inc., 177 USPQ 268, 269 (C.C.P.A. 1973); In re International Taste, Inc.,
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`53 USPQ2d 1604 (TTAB 2000); In re National Novice Hockey League, Inc., 222 USPQ 638, 641
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`(TTAB 1984); In re Consolidated Foods Corp., 200 USPQ 477 (TTAB 1978); In re Scholastic Testing
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`Service, Inc., 196 USPQ 517 (TTAB 1977).
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`F. Ownership of Incontestable Registration Not Absolute Bar to Refusal
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`Applicant has argued that its ownership of U.S. Registration No. 1432671 for the same mark for
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`analgesics and anti-inflammatory preparations creates a presumption of registrability. Ownership of an
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`incontestable registration does not give the applicant a right to register the same mark for different goods
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`or services, even if they are closely related to the goods or services in the incontestable registration. See
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`In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1782 (Fed. Cir. 2001) (applicant’s
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`ownership of incontestable registration of the word mark SAVE VENICE for newsletters, brochures and
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`fiindraising services did not preclude examining attorney from refusing registration of a composite mark
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`consisting of the phrases THE VENICE COLLECTION and SAVE VENICE INC. with an image of the
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`winged Lion of St. Mark for difierent goods; “[a] registered mark is incontestable only in the form
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`registered and for the goods or services claimed.”); In re Merrill Lynch, Pierce, Fenner & Smith Inc.,
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`828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) (incontestable registration of CASH MANAGEMENT
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`ACCOUNT for credit card services did not automatically entitle applicant to registration ofthe same
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`mark for broader financial services); In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 7 n. 5 (Fed. Cir.
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`1985) (incontestable status of registration for one speaker design did not establish non-functionality of
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`another speaker design with shared feature); In re Loew ’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865
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`(Fed. Cir. 1985) (examining attorney could properly refuse registration on ground that mark DURANGO
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`for chewing tobacco is primarily geographically deceptively misdescriptive, even though applicant
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`owned incontestable registration of same mark for cigars); In re Best Software Inc., 63 USPQ2d 1109,
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`1113 (TTAB 2002) (applicant's ownership of incontestable registration for the mark BEST! did not
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`preclude the examining attorney from requiring a disclaimer of "BEST" in applications seeking
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`registration of BEST! IMPERATIV HRMS "for goods which, although similar, are nevertheless
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`somewhat different"); In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (applicant’s ownership -
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`of incontestable registration for the mark BEST! did not preclude the examining attorney from requiring
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`a disclaimer of “BEST” in applications seeking registration of BEST! SUPPORT PLUS and BEST!
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`SUPPORT PLUS PREMIER for the same services plus additional services); In re Industrie Pirelli
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`Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988), afi"’d, 883 F.2d 1026 (Fed. Cir. 1989) (examining
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`‘
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`attorney could properly refuse registration on the ground that a mark is primarily merely a surname even
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`if applicant owned incontestable registration of same mark for unrelated goods); In re Banlc/lmerica
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`Corp., 231 USPQ 873 (TTAB 1986) (examining attorney could refuse registration of the mark BANK
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`OF AMERICA for computerized financial data processing services under §§2(e)(l) and 2(e)(2), despite
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`applicant’s ownership of incontestable registrations of the same mark for related services). See TMEP
`1216.02
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`il
`‘
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`Furthermore, prior decisions and actions of other trademark examining attorneys are without
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`evidentiary value and are not binding upon the Office. Each case is decided on its own facts, and each
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`mark stands on its own merits. AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269
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`(C.C.P.A. 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); In re National Novice
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`Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp., 200 USPQ
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`477 (TTAB 1978); In re Scholastic Testing Service, Inc., 196 USPQ 517 (TTAB 1977).
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`HI.
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`Conclusion
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`The Examining Attorney has demonstrated that (a) the primary significance of PRINCETON
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`PHARMACEUTICAL PRODUCTS is geographic; (b) prospective purchasers a likely to think that
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`applicant’s products originate in Princeton; and (c) the mark identifies the geographic origin of such
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`goods. As such, the mark has been shown to be primarily geographically descriptive of the origin of the
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`goods. Accordingly, the undersigned contends that the refusal on that basis should be affirmed.
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`Respectfully submitted,
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`/Heather D. Thompson/
`Trademark Examining Attorney
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`- P
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`age 7 of 7
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`
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`Law Office 103
`571.272.9287
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`heathenthompsonl@uspto.gov
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`Michael Hamilton
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`Managing Attorney
`Law Office 103
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`[I-1 The application has since been reassigned to the undersigned Examining Attorney.
`[11 Examining Attorney objects to entry of the third-party references on the record because a list ofregistrations is not
`sufficient to make the listed registrations and the contents of their files of record. The Board has consistently refused to take
`judicial notice of third-party registrations. In order to properly make third-party registrations part of the record, copies of the
`registrations or printouts from the Office’s electronic records (“X-Search”) must be submitted. See 37 C.F.R. § 2.l22(6)',
`TBMP § 703.02(b), and cases cited therein.
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