UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/646292
APPLICANT: NDSU Research Foundation
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: HIFI
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CORRESPONDENT’S REFERENCE/DOCKET NO: 9649/5
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
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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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 76/646292
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Refusal to Register – Descriptive
Registration is refused because the proposed mark merely describes a feature of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).
In this case, “HIFI” is descriptive of a feature of the goods, namely, the high soluble fiber content of the grain used to produce the oats.
Please see the attached internet and Nexis evidence in support of the descriptiveness finding.
Applicant should note the following additional ground for refusal.
Registration is refused because the proposed mark HIFI is a varietal name for the identified goods and as such, does not function as a mark. Trademark Act Sections 1, 2 and 45; 15 U.S.C. §§1051, 1052 and 1127; TMEP §1202.12. See attached evidence from the internet and Nexis that shows that HIFI is the varietal name for a type of oat.
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); In re Cohn Bodger & Sons Co., 122 USPQ 345 (TTAB 1959); Dixie Rose Nursery v. Coe, Comm’r Pats., 55 USPQ 315 (D.C. App. 1942, cert. denied).
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s):
Identification of Goods
The current wording used to describe the goods needs clarification because it is indefinite and does not clearly and adequately identify the type of oat based products intended.
Applicant may adopt the following identification of goods, if accurate: “Oat based products, namely, {specify items} for human consumption.” TMEP §1402.01.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
Multiple Class Application
Although examining attorney has not suggested any additional classes, if applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Katina S. Mister/
Katina S. Mister
Trademark Examining Attorney
571-272-8889
katina.s.mister@uspto.gov
Law Office 104
HOW TO RESPOND TO THIS OFFICE ACTION:
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.
108B8C
Print Request: Current Document: 1
Time of Request: January 27, 2006 01:58 PM EST
Number of Lines: 74
Job Number: 1861:81030149
Client ID/Project Name:
Research Information:
Combined Source Set 7
Hifi oats
Send to: MISTER, KATINA
TRADEMARK LAW LIBRARY
600 DULANY ST
ALEXANDRIA, VA 22314-5782
1 of 1 DOCUMENT
Copyright 2005 Gale Group, Inc.
ASAP
Copyright 2005 Crop Science Society of America
Crop Science
July 1, 2005
SECTION: No. 4, Vol. 45; Pg. 1664; ISSN: 0011-183X
IAC-ACC-NO: 135126201
LENGTH: 951 words
HEADLINE: Registration of 'HiFi' oat; REGISTRATIONS OF CULTIVARS
BYLINE: McMullen, M.S.; Doehlert, D.C.; Miller, J.D.
BODY:
'HiFi' spring oat (Avena sativa L.) (Reg. no. CV-372, PI 633006) was developed at the North Dakota Agricultural Experiment Station in cooperation with USDA-ARS and released by the Agricultural Experiment Station--North Dakota State University in 2001. It was designated ND9508252 during development and testing. HiFi was developed from a series of crosses with the pedigree Amagalon/4/M23/RL3038// 'Otana '/3/'Froker'/RL3038//RL3038/'Hudson '/5/MN78142/4/ W80-20/3/Hudson/'Lang'//'Dal' with the final cross made in 1993. The Amagalon line used in this cross was a selection from a synthetic hexaploid developed by Rothman (1984). The Amagalon source in this pedigree was designated 801441 by Rothman. Amagalon contributed Pc-91 that confers crown rust (incited by Puccinia coronata Cda. f. sp. avenae Eriks.) resistance in HiFi. A portion of the HiFi plants possess an uncharacterized source of resistance to stem rust (incited by Puccinia graminis Pers.: Pers. f. sp. avenae Eriks. and E. Henn.) race NA67. This resistance was putatively derived from Amagalon. RL3038 was provided by R.I.H. McKenzie (Agriculture Canada Research Station, Winnipeg, Manitoba) and was described by McMullen et al. (1997). MN78142 is a high yielding experimental line developed at the University of Minnesota with the pedigree "Otter'/3/'Garland'/PI267989//MN836/'Avon'.
The [F.sub.2] generation consisting of approximately 2000 plants was grown in the field in 1993 and panicles were selected on the basis of plant reaction to natural infection of stem rust and crown rust. [F.sub.2:3] seed from approximately 200 selected [F.sub.2] plants was planted in the greenhouse and advanced by modified single seed descent. [F.sub.3] seedlings that were susceptible to a composite of P. coronata races that are virulent on Pc-38 and Pc-39 and P. graminis race NA27 were removed from the population and resistant seedlings were grown to maturity. [F.sub.4] lines from 39 resistant F3 plants were grown in panicle-hill plots in 1994 at Fargo, ND, and F4 panicles were selected from stem and crown rust resistant hill plots. Seed from 32 selected [F.sub.4] panicles was sown in hill-plots, comprised of two hills in 1995, and seed from a selected [F.sub4:5] hill-plot was bulked to produce the line that was designated ND9508252. Breeder seed of HiFi was produced in 1999 by roguing off-type plants from an [F.sub.9] bulk and harvesting the remaining plants.
HiFi has been evaluated for grain yield in North Dakota since 1995, and in the Uniform Midseason Oat Performance Nursery (UMOPN) in 2000 and 2001. Based on 20 location-years in North Dakota and 23 location-years in the UMOPN, HiFi is high yielding and flowering averages 4 d later than 'Jerry' (McMullen et al., 1997). In North Dakota, its average grain yield was 16% higher than Jerry and test weight was 1% less than Jerry. HiFi has low hull content and high experimental milling yield. In North Dakota, HiFi was similar in height to Jerry and exhibited similar lodging resistance. HiFi possesses Pc-91 plus other unknown genes that together confer excellent resistance to prevalent crown rust pathotypes in ND. It possesses Pg-13 that confers resistance to many stem rust pathotypes and a portion of the plants possess resistance to stem rust NA67 that is likely conferred by factors contributed by Amagalon. HiFi has moderate tolerance to Barley yellow dwarf virus. HiFi was released to provide a crown and stem rust resistant cultivar, with high grain yield potential and higher groat [beta]-glucan or soluble fiber concentration than other available cultivars. The name HiFi is intended to connote the high soluble fiber concentration of the grain. HiFi is adapted to North Dakota and adjacent regions of South Dakota and Minnesota.
Culms and leaf margins of HiFi are glabrous and ligules are present. It has equilateral panicles with ascending branches. Spikelet separation occurs by fracture and floret separation by heterofracture. Lemmas are glabrous and basal hairs are absent. Kernels of HiFi are white, fluorescent, medium to large, and midplump. Awns are absent, but weak awns develop under some environmental conditions.
Variety protection will be sought under the Plant Variety Protection Act, Public Law 91-577 with the option that HiFi may be sold for seed by name only under the certified seed classes designated as Breeder, Foundation, Registered, and Certified. Breeder and Foundation seed will be maintained by the Seedstock Project, Agric. Exp. Stn., North Dakota State Univ., Fargo, ND 58105-5051. Limited quantities of seed for research are available upon request from the corresponding author. Recipients of seed are asked to make appropriate recognition of the source of HiFi if it is used in the development of a new cultivar, germplasm, parental line, or genetic stock.
References
McMullen, M.S., D.C. Doehlert, and J.D. Miller. 1997. Registration of 'Jerry' Oat. Crop Sci. 37:1015-1016.
Rothman, P.G. 1984. Registration of four stern rust and crown rust resistant oat germplasm lines. Crop Sci. 24:1217-1218.
M.S. McMULLEN,* D.C. DOEHLERT, AND J.D. MILLER
M.S. McMullen, Dep. of Plant Sciences, North Dakota State Univ., Fargo, ND 58105-5051; D.C. Doehlert, USDA-ARS and Dep. of Cereal Science and Food Technology, North Dakota State Univ., Fargo, ND 58105-5051; J.D. Miller, USDA-ARS and Dep. Plant Pathology, North Dakota State Univ., Fargo, ND 58105-5051. Research supported in part by the Quaker Oats Co. Cooperative investigations of the North Dakota Agric. Exp. Stn. and USDA-ARS. Registration by CSSA. Accepted 31 Jan. 2005. *Corresponding author (michael.mcmullen@ndsu.nodak.edu).
IAC-CREATE-DATE: August 16, 2005
LOAD-DATE: August 17, 2005
108B8C
********** Print Completed **********
Time of Request: January 27, 2006 01:58 PM EST
Print Number: 1861:81030149
Number of Lines: 74
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Send To: MISTER, KATINA
TRADEMARK LAW LIBRARY
600 DULANY ST
ALEXANDRIA, VA 22314-5782