Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/584244

 

This letter responds to the applicant’s communication filed on January 22, 2005.

 

The request to delete "propagation material for plants" is withdrawn.  However, the examining attorney does not understand why an amendment of May 3, 2004 to the identification of goods was needed as the only problem was that filing receipt did not consist of a semi colon.

 

The request to amend the word "material" by specifying the common commercial name of the goods is continued and made Final.

 

An acceptable identification of goods or recitation of services is required for three (3) reasons. First, it is important for the examining attorney to understand the exact nature of the goods and services for which registrations is sought, so that the attorney may properly analyze the application in accordance with the law and USPTO practices and procedures. Secondly, the language must be clear and acceptable for proper classification. Finally, the scope of the identification must be clear so that marks may be properly compared, particularly for Section 2(d) likelihood of confusion purposes. 15 U.S.C. § 1051(a)(1)(A) and 1051(b)(1)(A).

 

The Trademark Act requires a written application “specifying” the goods or services on or in connection with which an applicant uses, or has a bona fide intention to use, the mark in commerce. 15 U.S.C. § § 1051 (a)(1)(A) and 1051(b)(1)(A). To “specify” means to name in an explicit manner. Additionally, Trademark Rule 2.33(a)(1)(v), 37 C.F.R. § 2.33 (a)(1)(v), requires that the application specify the “particular” goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark. The identification of goods or services should set forth common names, using terminology, which is generally understood. For those product or services, which may not have common names, language, which is as clear and succinct as possible, should be used. Technical or esoteric language and lengthy descriptions of characteristics or use are not appropriate.

 

The identification of goods now read:

 

      Propagation material for plants; living plants and natural flowers, namely, ornamental plants  

 

The dictionary[1] defines material as:

 

        Material     The substance or substances out of which a thing is or can be

                           made.  Something, such as an idea or information, that is to be

                            refined and made or incorporated into a finished effort.

 

The term material is not specific; by definition it could include a large variety of items for plants. As such, the wording "propagation materials" does not satisfy the requirements for an acceptable identification.

 

Again, the wording "Material” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Applicant has made of record a copy of a printout from the website of European Commission Directive 1999 93/49 EEC of June 1993 and 28 June in which "propagation material" is acceptable. The examining attorney refer applicant to Trademark Manual of Examining Procedures Section 1402.01 which state that the identification of goods must be "specific, clear, accurate and concise."  Can applicant really argue that the term "material" is specific, clear, accurate and concise of its goods?

 

Further, applicant has filed this application to register the mark in the United States thus, the requirements for registration are not governed by the European Commission.

 

Responsive to a Final Refusal

 

Applicant may respond to this final action by either:  (1) submitting a timely response that fully satisfies any outstanding requirements, if feasible; (2) timely filing an appeal of this final action to the Trademark Trial and Appeal Board; or (3) timely filing a petition to the Director if permitted by 37 C.F.R. §2.63(b).  37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, See 37 C.F.R. §2.146 and TMEP Chapter 1700.  If applicant fails to respond within six months of the mailing date of this refusal, the application will be abandoned.  37 C.F.R. §2.65(a).

 

 

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Amos T. Matthews/

Examining Attorney

Law Office 108

(571) 272-9346

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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