From:
`Sent:
`
`Thompson, Heather
`Mon 3/28/05 08:08 PM
`
`TRADEMARK APPLICATION NO. 78222332 - PRINCETON
`Subject:
`PHARMACEUTICAL PRODUCTS - N/A
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`SERIAL NO: 78/222332
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`APPLICANT:Bristol-Myers Squibb Company
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`CORRESPONDENT ADDRESS:
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`Nadine Flynn
`Bristol-Myers Squibb Company
`Park AVCHUC
`New York NY 10154
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`* 8 2 2 2 3 3
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`2 *
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`BEFORE THE
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`TRADEMARK TRIAL
`AND APPEAL BOARD
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`MARK:
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`PRINCETON PHARMACEUTICAL PRODUCTS
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`CORRESPONDENT ‘S REFERENCE/DOCKET NO: N/A
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`P1635‘? Pr°Vide in 3“ °°”"5P°“de“°"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 Attorney's name and
`Law Office number.
`4. Your telephone number and e-mail
`address.
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`EXAMINING ATTORNEY'S APPEAL BRIEF
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`Procedural History
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`Applicant applied to register the mark PRINCETON PHARMACEUTICAL PRODUCTS
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`on March 6, 2003, alleging a boner fide intention to use the mark in commerce in connection with a
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`“house mark for a line of pharmaceutical preparations” in International Class 5.
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`In the first Office
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`action, dated August 25, 2003, the assigned examining attorney refused registration under Section
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`2(e)(2) of the Trademark Act on the grounds that the mark is primarily geographically descriptive
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`of such goods.1 By Final Action dated April 8, 2004, the undersigned maintained the refusal on
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`geographic descriptiveness. The applicant submitted a Request for Reconsideration together with
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`1 The application has since been reassigned to the undersigned Examining Attorney.
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`

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`its Appeal on October 13, 2004.
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`In an action dated November 4, 2004, the request was denied and
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`this Appeal resumed.
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`Issue on Appeal
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`The sole issue on appeal is Whether PRINCETON PHARMACEUTICAL PRODUCTS is
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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
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`the goods and/or services Within the meaning of Trademark Act Section 2(e)(2):
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`(1) the primary significance of the mark must be geographic, i.e., the mark names a particular
`geographic place or location;
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`i.e.,
`(2) purchasers must be likely to make a goods-place or services-place association,
`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) 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
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`Jersey.” (The American Heritage Dictionary of the English Language, 4&1 Ed., 2000.) When the
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`geographic significance of a term is its primary significance and the geographic place is neither
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`obscure nor remote, the goodsiplace or serviceslplace association will ordinarily be presumed from
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`the fact that the applicant’s goods or services originate in the place named in the mark.
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`In re JT
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`Tobacconists, 59 USPQ2d 1080 (TTAB 2001) (MINNESOTA CIGAR COMPANY primarily
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`geographically descriptive of cigars); In re Chalk ’S International Airlines Inc., 21 USPQ2d 1637
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`(TTAB 1991) (PARADISE ISLAND AIRLINES held primarily geographically descriptive of the
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`transportation of passengers and goods by air); In re California Pizza Kitchen Inc., 10 USPQ2d
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`1704 (TTAB 1988) (CALIFORNIA PIZZA KITCHEN held primarily geographically descriptive
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`of restaurant services).
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`Applicant argues that its evidence established that the association of PRINCETON with
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`academics is of equal or greater significance than the established geographic significance.
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`However, the fact that a term may have other meanings in other contexts (such as academics) does
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`not necessarily negate the basis for refilsal as long as the most prominent meaning or significance
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`is geographic for the identified goods. In re Oprylano’ USA Inc., 1 USPQ2d 1409 (TTAB 1986); In
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`re Cookie Kitchen, Inc., 228 USPQ 873 (TTAB 1986); TMEP §1210.02(b). That is, the fact that
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`PRINCETON may identify a university or other academic institutions does not diminish the
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`geographic significance of the term. Applicant has put forth In re Jacgues Bernier, Inc. and In re
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`Jim Crockett Promotions Inc. for the proposition that some geographic terms do not stand as
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`primarily geographic because of other more prominent meanings. But unlike the marks RODEO
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`DRIVE and THE GREAT AMERICAN BASH, PRINCETON is primarily geographically
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`descriptive in the context ofpharmaceutical products. Applicant’s reliance on cases involving the
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`term AMERICAN as analogous in this situation is misplaced.
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`B. Purchasers are Likely to Make a Go0ds—Plaee Association
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`

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`Purchasers must be likely to make a goods-place association, i.e., purchasers are likely to
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`think that the goods originate in the geographic location identified in the mark. Again, evidence of
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`record supports the goods-place association. See excerpt from applicant’s website (www.bms.com)
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`and Lexis-Nexis articles in which pharmaceutical products and applicant’s products specifically,
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`are connected to Princeton, New Jersey. That is, purchasers are likely to believe the applicant’s
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`goods will originate in Princeton, for two reasons made clear in the record:
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`(a) because applicant’s
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`goods are researched and developed in Princeton and (b) because Princeton is known for
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`pharmaceutical products and pharmaceutical companies. Again, the fact that applicant maintains
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`other research facilities beyond Princeton does not diminish the geographic significance or goods-
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`place association for this mark in 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 subj ect
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`mark are not necessarily manufactured in Princeton, the mark does not identify the geographic
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`origin of the goods. However, as established by the evidence in the record, the applicant company
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`is based in Princeton and the development and research for the goods takes place in Princeton. The
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`origin of the goods can clearly be connected to Princeton. Again, the Lexis-Nexis articles of record
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`along with the results of a search using the Google search engine,
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`indicate that applicant is
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`headquartered in Princeton 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
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`a determination of geographic descriptiveness. See In re JT Tobacconisis, 59 USPQ2d 1080
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`(TTAB 2001);
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`In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998);
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`In re Cnalk’s
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`International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re Mne Socieijz of/lrnerica Inc., 12
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`USPQ2d 1139 (TTAB 1989); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988);
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`In re Cambridge Digital Systems,
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`1 USPQ2d 1659 (TTAB 1986); In re Bank/lmerica Corp., 231
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`USPQ 873 (TTAB 1986); In re Application of Handler Fenton Westerns, Inc. 214 USPQ 848
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`(TTAB 1982); TMEP §1210.07(a). Evidence of record, together with the applicant’s description of
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`the goods, confirms that PHARMACEUTICAL PRODUCTS is essentially a generic phrase in this
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`context
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`and does nothing to obviate the geographic descriptiveness of PRINCETON
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`PHARMACEUTICAL PRODUCTS.
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`See definitions of generic terms in record,
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`from The
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`American Heritage Dictionary ofthe English Language, 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
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`proposition that the term PRINCETON is registrable without further evidence of distinctiveness on
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`the Principal Register} The Trademark Trial and Appeal Board has often noted, however, that
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`"each case must be decided on its own merits. We are not privy to the records in the files of the
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`cited registrations and, moreover, the determination of registrability of particular marks by the
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`Trademark Examining Groups cannot control the result in another case involving a different mark."
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`(In re Stylecliclccom Inc., 57 USPQ2d 1445 (TTAB 2000), citing In re Nett Designs, Inc., 57
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`USPQ2d 1564 (Fed. Cir. 2001) ["Even if some prior registrations had some characteristics similar
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`to applicant's application, the PTO's allowance of such prior registrations does not bind the Board
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`or this court."].).
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`See also, /ll./IF 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
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`2 Examining Attorney objects to entry of the third-party references on the record because a list of registrations 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—pa1ty 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
`CFR. § 2.l22(e)', TBMIP § 703.02(b), and cases cited therein.
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`

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`Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated Foods Corp.,
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`200 USPQ 477 (TTAB 1978); In re Scholastic Testing 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
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`for analgesics and anti-inflammatory preparations creates a presumption of registrability.
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`Ownership of an incontestable registration does not give the applicant a right to register the same
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`mark for different goods or services, even if they are closely related to the goods or services in the
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`incontestable registration. See In re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778,
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`1782 (Fed. Cir. 2001) (applicant’s ownership of incontestable registration of the word mark SAVE
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`VENICE for newsletters, brochures and fundraising services did not preclude examining attorney
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`from refusing registration of a composite mark consisting of the phrases THE VENICE
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`COLLECTION and SAVE VENICE INC. with an image of the winged Lion of St. Mark for
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`different goods; “[a] registered mark is incontestable only in the form registered and for the goods
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`or services claimedf’); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d
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`1141 (Fed. Cir. 1987) (incontestable registration of CASH MANAGEMENT ACCOUNT for credit
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`card services did not automatically entitle applicant to registration of the same mark for broader
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`financial services); In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 7 n. 5 (Fed. Cir. 1985)
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`(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
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`865 (Fed. Cir. 1985) (examining attorney could properly refuse registration on ground that mark
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`DURANGO for chewing tobacco is primarily geographically deceptively misdescriptive, even
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`though applicant owned incontestable registration of same mark for cigars); In re Best Software
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`Inc., 63 USPQ2d 1109, 1113 (TTAB 2002) (applicant's ownership of incontestable registration for
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`the mark BEST! did not preclude the examining attorney from requiring a disclaimer of "BEST" in
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`applications seeking registration of BEST! IMPERATIV HRMS "for goods which; although
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`similar, are nevertheless somewhat different"); In re Best Software Inc., 58 USPQ2d 1314 (TTAB
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`2001) (applicant’s ownership of incontestable registration for the mark BEST! did not preclude the
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`examining attorney from requiring a disclaimer of “BEST” in applications seeking registration of
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`BEST! SUPPORT PLUS and BEST! SUPPORT PLUS PREMIER for the same services plus
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`additional services); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564 (TTAB 1988), a ’d,
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`883 F.2d 1026 (Fed. Cir. 1989) (examining attorney could properly refuse registration on the
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`ground that a mark is primarily merely a surname even if applicant owned incontestable registration
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`of same mark for unrelated goods); In re Bank/lmerica Corp, 231 USPQ 873 (TTAB 1986)
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`(examining attorney could refuse registration of the mark BANK OF AMERICA for computerized
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`financial data processing services under §§2(e)(1) and 2(e)(2), despite applicant’s ownership of
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`incontestable registrations of the same mark for related services). See TMEP 1216.02
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`Furthermore, prior decisions and actions of other trademark examining attorneys are
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`without evidentiary value and are not binding upon the Office. Each case is decided on its own
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`facts, and each mark stands on its own merits. AI!/IF Inc. v. American Leisure Products, Inc., 177
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`USPQ 268; 269 (C.C.P.A. 1973); In re International Taste, Inc.; 53 USPQ2d 1604 (TTAB 2000);
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`In re National Novice Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984); In re Consolidated
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`Foods Corp, 200 USPQ 477 (TTAB 1978); In re Scholastic Testing Service, Inc., 196 USPQ 517
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`(TTAB 1977).
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`III.
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`Conclusion
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`The Examining Attorney has demonstrated that
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`(a)
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`the primary significance of
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`PRINCETON PHARMACEUTICAL PRODUCTS is geographic; (b) prospective purchasers a
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`likely to think that applicant’s products originate in Princeton; and (c) the mark identifies the
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`geographic origin of such goods. As such, the mark has been shown to be primarily geographically
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`descriptive of the origin of the goods. Accordingly, the undersigned contends that the refilsal on
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`that basis should be affirmed.
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`Respectfully submitted,
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`/Heather D. Thompson/
`Trademark Examining Attorney
`Law Office 103
`571.272.9287
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`heather.thompson1@uspto.goV
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`Michael Hamilton
`
`Managing Attorney
`Law Office 103