UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING DATE.  If the mailing date of this Office Action does not appear above, visit the USPTO website, http://tarr.uspto.gov, and insert the application serial number to view the prosecution history.

Serial Number 78565329

 

In consideration of Applicant’s Petition to Revive Abandoned Application, dated and filed May 22, 2006, the statement contained therein, and the record hereof, the undersigned examining attorney has reexamined the above‑referenced application, in accordance with Trademark Rule of Practice 2.63, 37 C.F.R. § 2.63 (2005), and determined the following: 

NO CONFLICTING MARK

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (2003).  Trademark Manual of Examination Procedures § 704.02 (4th ed. 2005).

REGISTRATION REFUSAL—VARIETAL NAME

Applicant filed an intent-to‑use application under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (2003), to register the designation “THUNDER” for “agricultural grains for planting; agricultural seeds” on February 11, 2005. 

Registration is refused, pursuant to Sections 1, 2, and 45 of the Trademark Act, because the applied-for mark is a varietal (or cultivar) name for the identified goods.  Id. § 1051–1052, 1127; TMEP § 1212.12. 

It is settled law that varietal names are generic terms that cannot function as a source-indictor of the goods, and therefore, cannot be registered as a trademark.  In re KRB Seed Co., 76 U.S.P.Q.2d 1156, 1158 (TTAB 2005); see, e.g., In re Delta & Pine Land Co., 26 USPQ2d 1157, 1159 n.4 (TTAB 1993); In re Cohn Bodger & Sons Co., 122 USPQ 345 (TTAB 1959).

The attached evidence demonstrates that THUNDER is a varietal name for several fresh vegetables and agricultural seeds, including CUCUMBER, WHEAT, PEPPER, ALFALFA, RYEGRASS, and RAPE.  In support of this refusal, the evidence includes (1) excerpts from the database maintained by the International Union for the Protection of New Varieties of Plants (“UPOV”) listing THUNDER as the “denomination” of varieties of wheat, cucumber and alfalfa; (2) an excerpt from a listing on plant varieties kept by the Seed Regulatory and Testing Branch of the United States Department of Agriculture listing THUNDER as a agricultural variety name for alfalfa, annual ryegrass and rape; (3) an excerpt from the Germplasm Resources Information Network web server (“GRIN”) that is maintained by a unit of the United States Department of Agriculture's Agricultural Research Service wherein THUNDER is listed as a cultivar name for alfalfa;  (4) an excerpt from a listing on plant varieties kept by the Seed Regulatory and Testing Branch of the United States Department of Agriculture listing THUNDER as a vegetable variety name for cucumber; and (5) various Internet information, including a 2005 forage update from the University of Florida indicating THUNDER as a cultivar name for ryegrass, and a commercial horticulture newsletter, prepared in association with Virginia Polytechnic Institute and Virginia State University, indicating THUNDER as a varietal name for cucumber.

The resources constitute substantial evidence to demonstrate that Applicant’s applied‑for mark is a variety name, and therefore generic and unregistrable.  For this reason, Applicant’s mark is refused registration on the Principal and Supplemental Registers.

Although the 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 to register, Applicant must also respond to the following:

OUTSTANDING REQUIREMENT—SPECIMEN

Applicant has stated that it did not receive the previous Office Action of September 11, 2005.  The undersigned examining attorney has determined that all the issues raised in that Office Action are still valid and the requirement is CONTINUED.  If the previous Office Action contained fee information or requirements, please confirm current fee information at http://www.uspto.gov.

Applicant can view and download a copy of the Office Action along with any supporting documents in support thereof online at http://portal.gov.uspto.report/external/portal/tow.  Enter the serial number of this application in the box labeled NUMBER and click on the SUBMIT button.  The Office Action can then be viewed by clicking the link labeled “Offc Action Outgoing” in the Document Description section, to the right of the Mail/Create Date section, indicating a date of September 11, 2005.  If Applicant has any problems viewing the Office Action, please contact the undersigned.

Applicant has SIX months from the date of this Office Action to respond to the issues raised in the previous Office Action. 

Please contact the undersigned attorney with any questions.

                                                                        Sincerely,

/Judy Helfman/

Judith M. Helfman

USPTO - Trademarks

Law Office 114

(571) 272-5892 direct line

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond 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 was issued via e-mail, you must wait 72 hours after receipt of the Office Action to respond via TEAS).  NOTE: THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.

 

• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above; include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. § 2.197.

 

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.