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`Filed:
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`Mark:
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`mm-.
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Bristol-Myers Squibb Company
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`78/222,332
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`March 6, 2003
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`Heather D. Thompson
`Examining Attorney
`Law Office 103
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`PRINCETON PHARMACEUTICAL PRODUCTS
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`Our Ref:
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`BRM 0408478
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`REQUEST FOR RECONSIDERATION
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`Commissioner for Trademarks
`P.O. Box 1451
`A
`Alexandria, VA 22313-1451
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`Hlllllllllllllllllllllllllllllllllfllllllllllllll
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`,
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`10-13-2004
`u.s. Pawnta TMOfcITM Mail Rep: at gm
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`Applicant submits this Request for Reconsideration from the April 8, 2004 Final Office
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`Action issued in connection with the above-identified Application, pursuant to 37 C.F.R. Section
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`2.64(b), which permits such a Request to be made during the six month period between the
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`issuance of a Final Office Action and the expiration of time for filing an appeal.
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`Applicant is the owner ofU.S. Reg. No. 1,432,671, which is discussed further in Section
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`II. In the Final Office Action, the Examining Attorney made final the refusal to register the mark
`PRINCETON PHARMACEUTICAL PRODUCTS, on the asserted basis that it is geographically
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`descriptive. For the reasons set forth below, Applicant respectfully requests that the Examining
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`Attorney reconsider and withdraw this refusal, and pass the mark to publication.
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`I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an
`the Commissioner for Trademarks, 2900 Crystal Drive, Arlington, Virgin‘ 2
`2-
`14 on:
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`velope addressed to
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`Cerfificate ofFirst Qlms Mailing
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`October; 7, 2004
`(Date of Deposit)
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`(Signature)
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`\
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`_____._.___.__....§9.5.__..__._____.___
`151’men gm Sadler
`October 7 2
`(Date ofSignature)
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`(Printed name ofperson mailing paper or fee)
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`

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`I.
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`The Mark Does Not Meet the Two-Part Test for Geog_r;'aphical Descriptiveness, As
`Set Forth by the Examining Attorney
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`In the Final Office Action, the Examining Attorney enumerated a two-part test for the
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`determination of whether a mark is geographically descriptive: (1) the mark must be the name of
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`a place generally known to the public; and (2) the public must believe that the goods or services
`identified by the mark originate from this place or location (the “goods-place association”). Inge
`California Pizza Kitchen, 1t) U.S.P.Q2d 1704, 1705 (T.T.A.B. 1989).
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`With respect to the first prong, it is the Examining Attomey’s continued assertion that
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`the primary significance of the term PRINCETON is as a geographic location, namely, a
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`borough in west central New Jersey within Mercer County. The Examining Attorney asserts
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`that “Princeton is first and foremost (based on the definitions of record) a geographical location.”
`(Final Office Action p. 2). However, these “definitions ofrecord” as provided by the Examining
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`Attorney also state that Princeton is the home of Princeton University, which supports the view
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`that the association with Princeton is as a place of education. In fact, it is App1icant’s continued
`beliefthat the primary significance ofthe term PRINCETON is not geographical, but rather that
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`it is known internationally as the home of Princeton University, as well as other academic
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`institutions, and that it is this association with prestigious academics that is its primary
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`significance.. An intemet (Google) search ofthe term PRINCETON brings up many hits
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`regarding Princeton University, the Princeton Review, the Institute for Advanced Study, the
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`Princeton Theological Seminary, the Princeton Plasma Physics Laboratory, and other esteemed
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`institutions. (See attached Exhibit __) Clearly, the renown of the term PRINCETON has to do
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`with its being a center of high quality academics, rather than just as a geographic locale, and
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`Applicant continues to maintain that the Examining Attomey’s scant dictionary evidence does
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`not sufficiently refute this.
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`In addition, the second part ofthe test outlined by the Examining Attorney, the “goods-
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`place association,” is not met in these circumstances. There is no reason that the public would
`expect the goods recited in the application, i.e., a line ofpharmaceuticals, to have their origin in
`Princeton. The region of Princeton, New Jersey is not particularly known for pharmaceuticals,
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`and therefore consumers are unlikely to draw such an association between the term
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`PRINCETON and a source of pharmaceutical production. In In re Venice Maid Co., Inc., 222
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`U.S.P.Q. 618 (T.T.A.B. 1984), the TTAB reversed the Examining Attomey’s refusal to register
`VENICE MAID for various canned goods. The Board held that the Examining Attorney failed
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`to make a prima facie evidentiary showing that purchasers would expect the goods recited in the
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`application to have their origin in the geographic locality in the mark. In that case, the
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`Examining Attorney submitted two pieces ofevidence: (1) an excerpt from a cookbook that
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`discussed various food specialties ofthis region ofItaly; and (2) a label for a spaghetti sauce that
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`referred to the product as “Industrial Strength Venetian Spaghetti Sauce.” In finding that this
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`evidence did not establish a goods-place association, the Board found:
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`_
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`While it is true that large cities are often the point of origin for a wide variety of
`goods, we are unwilling to sustain the refusal to register in this case simply on the
`basis that Venice is a large Italian city that could, conceivably, be the source of a
`wide range of goods, including canned foods. Stated differently, a proper refusal
`to register here must be based on at least some evidence that Venice is a locality
`canned foods ofthe sort identifiedinthe applicationmight originate.
`Although Princeton is the home of many research institutes and other academic centers,
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`there is no evidence that it is likely the origin of pharmaceuticals. Moreover, since the region is
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`notparticularly known for pharmaceuticals production, consumers are unlikely to draw a goods-
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`place association .
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`As set forth in our prior Response to Office Action, although Applicant maintains a
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`research facility in Princeton, New Jersey, its main corporate offices are in New York City, and
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`there is no reason that purchasers would make any association with App1icant’s pharmaceuticals
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`and the locale of Princeton, New Jersey. In the Final Office Action, the Examining Attorney
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`states that “[w]hen the geographic significance of a term is its primary significance and the
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`geographic place is neither obscure nor remote, the goods/place or services/place association will
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`be presumed.” (Office Action p. 2). However, undermining this presumption, as set forth above,
`Applicant disputes the conclusion that the primary significance ofthe term PRINCETON is its
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`geographic significance. In addition, Applicant wishes to clarify that although it has a research
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`facility in Princeton, the pharmaceuticals that are the subject ofresearch are neither
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`manufactured nor otherwise produced at this facility.
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`II.
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`The Examining Attorney’s Refusal is an Impermissible Collateral Attack on
`Applicant’s Incontestable Registration for this Mark
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`In addition to the pending application at issue, Applicant also owns an incontestable
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`registration covering this mark —- U.S. Reg. No. 1,432,671 --, for analgesics and anti-
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`inflammatory pharmaceutical preparations, issued in 1987. According to the principles set forth
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`in In re American Sail Training Association, 230 U.S.P.Q. 879 (T.T.A.B. 1986), the fact that
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`there is an incontestable registration for the same mark means that the final refusal of the
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`Examining Attorney based on geographical descriptiveness constitutes an impermissible
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`collateral attack. In In re American Sail Training Association, the Board held that the
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`requirement of a disclaimer ofthe term “TALL SHIPS” was impermissible, as there existed an
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`incontestable registration of the mark where such term had not been required to be disclaimed.
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`Here, although a disclaimer is not the specific issue, the Examining Attomey’s refusal to register
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`nonetheless concerns a challenge of registrability of a mark that is already the subject of an
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`incontestable registration, and therefore is similarly an impermissible collateral attack.
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`CONCLUSION
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`For all of the foregoing reasons, Applicant continues to respectfully submit that its mark
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`PRINCETON PHARMACEUTICAL PRODUCTS is not geographically descriptive, and
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`respectfully requests that the mark now be passed to publication.
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`Dated:
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`New York, New York
`October 7, 2004
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`Respectfully submitted,
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`FROSS ZELNICK LEI-IRMAN
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`& ZISSU, P.C.
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`RuthE.Lazar
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`Attorneys for Applicant
`866 United Nations Plaza
`
`New York, New York 10017
`(212) 813-5900
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`I:\rlazar\Bristol Myers\041005-0408478-ROA-Reconsideration.doc