UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/414023 MUSTANG

 

This letter responds to the applicant’s communication filed on January 3, 2003.

 

Foreign Registration is Accepted and Entered

 

The foreign registration is accepted and entered into the record. 

Dual Filing Basis Maintained

 

The applicant has filed relying on its claim of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and on a foreign registration under Section 44(e), 15 U.S.C. §1126(e).  The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application.  The applicant has not clearly expressed its intention to rely on the foreign registration as the sole basis for registration; thus, the dual filing basis is maintained. 

 

FINAL REFUSAL – Proposed Mark Is a Varietal Name

 

The applicant is seeking to register the mark  MUSTANG for live rose plants, parts of plants and cut flowers.

The examining attorney refuses registration because the proposed mark is a varietal name for the identified goods.  Trademark Act Sections 1, 2 and 45, 15 U.S.C. Sections 1051, 1052 and 1127. 

 

Varietal (or cultivar) names are generic designations and cannot be registered as trademarks.  See In re Delta & Pine Land Co., 26 USPQ2d 1157, 1159 n.4 (TTAB 1993); In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034 (TTAB 1979); In re Farmer Seed & Nursery Co., 137 USPQ 231 (TTAB 1963); TMEP section 1202.05.

 

The term “MUSTANG” used in the proposed mark is a varietal name for the following live plants and/or flowers:  roses, tall fescue, wheat, oats, tomatoes, lettuce, soybeans, sugar beets, French beans, andenlupine, peas, corn, chrysanthemums, tulips, onions, pumpkins, marrow, courgette, vegetable marrow, cucumbers, beet fodder, sugar, white mustard ryegrass, garden beans, alfalfa, smooth brome, sorghum, cabbage and geraniums.   See the documents evidencing the varietal significance of the term “MUSTANG” taken from a selection of varietal databases attached to the prior examining attorney’s office action dated September 23, 2002.  Therefore, the proposed mark is a generic designation for the goods listed in the application.  Accordingly, registration is refused under Trademark Act Sections 1, 2 and 45, 15 U.S.C. Sections 1051, 1052 and 1127. 

 

In response to the refusal, the applicant argues that it is entitled to registration of the proposed mark because the rose variety identified by the term MUSTANG is no longer available to the public and is not in commerce.  The applicant, however, has not provided any evidence to support its position.  Furthermore, the examining attorney attaches evidence from Modern Roses XI, with a copyright date of 2000, that lists MUSTANG in its “most comprehensive listing of roses in the world.”  As such, it appears that MUSTANG is still recognized as a rose variety. 

 

Moreover, varietal names, which are generic names for plants, are not registrable since they are not capable of distinguishing the applicant's goods.  Lanham  Act §23,  15 U.S.C.A.  §1091;    Clairol, Inc. v. Roux Distributing  Co.,  280 F.2d 863,   126 U.S.P.Q. 397  (C.C.P.A. 1960)  (generic term Supplemental Registration cancelled);   “Commander York” for  a variety of  apple tree was held not registrable as a mark by analogy to generic  varietal names for apples, such as “McIntosh,”  “Winesap” and “Golden Delicious.”  In re Hilltop Orchards & Nurseries, Inc.,  206  U.S.P.Q. 1034 (T.T.A.B.  1979). See   In  re Delta & Pine Land Co.,  26 U.S.P.Q.2d  1157 (T.T.A.B. 1993)   (DELTAPINE for seeds refused registration where applicant conceded  that  DELTAPINE 20, DELTAPINE 50, DELTAPINE 102 and DELTAPINE 506  are generic varietal names for several varieties of cotton and soybean  plants. “There is no question that varietal names are generic designations  and  cannot be registered as trademarks.”).

 

 In 1981 the Convention of the International Union for the Protection of New Plant Varieties (UPOV) became applicable to the United  States.  Manual of Patent Examining Procedures  §1612 (1983 rev.).  Article 1 of the UPOV provides that a new plant variety shall be designated by a denomination destined to be its generic  designation and member states will ensure that no rights in the  name “shall hamper the free use of the denomination in connection  with the variety, even after the expiration of the [plant patent]  protection.”  See text of the UPOV at  Leaffer, International Treaties on Intellectual  Property 53 (1990).

 

For the foregoing reasons, the refusal to register the proposed mark is maintained and MADE FINAL.

 

Proper Response to Final Action

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

Please also note: If the applicant submits a response via email, an electronic signature is required.  An applicant, registrant or attorney may sign an e-mail communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an e-mail communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.  A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .gif format.  TMEP  Section 304.08.           

 

 

 

 

 

/daniellemattessich/

Danielle I. Mattessich

Trademark Attorney, Law Office 105

(703) 308-9105 Ext. 261

Fax:  (703) 746-8105

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.