UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 78/705649
APPLICANT: OMS Investments, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: BIO-RATIONAL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 870974
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 78/705649
The assigned trademark examining attorney has reviewed the referenced application and has determined the following.
Search Results
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.
Section 2(e)(1) - Descriptive Refusal
Registration is refused because the proposed mark is merely descriptive of the identified goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209.01(c) et seq. Applicant proposes “BIO-RATIONAL” for use in conjunction with “Live plants and grass seed for domestic and commercial use.” The Applicant’s mark merely describes the composition of the goods identified in the instant application.
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).
A term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive. For the purpose of a Section 2(e)(1) analysis, it is sufficient that the term describe only one attribute of the goods and/or services to be found merely descriptive. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973); TMEP §1209.01(b).
A mark that combines descriptive terms may be registrable if the composite creates a unitary mark with a separate, nondescriptive meaning. However, if each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive. In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer software for use in development and deployment of application programs on global computer network); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE held to be merely descriptive of news and information service for the food processing industry); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) (SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”); In re Entenmann’s Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT held to be merely descriptive of bread containing oats and hazelnuts).
Specifically, the attached evidence from the website www.onelook.com shows that the definition of the term “BIORATIONAL” is the “based on biological principles; having an effect by natural means; said, for example, of such pesticidal agents as viruses, bacteria, protozoa, fungi, or naturally occurring biochemicals.”
Additional evidence is provided showing the use of the term “BIORATIONAL”. The examining attorney refers to the excerpted articles from the examining attorney's search of the Internet using the GOOGLE® search engine in which “BIORATIONAL” appeared in over 64,000 stories. See attachments. The submitted stories are a representative sample of the stories retrieved by the indicated search. Sample search summary page(s) and representative stories from the search have both been provided. Search result summary pages have probative value since search engine results as well as Web site contents are equally accessible to the consuming public and both constitute evidence that the public may be exposed to the term. See In re Fitch ICBA Inc., 64 USPQ2d 1058 (TTAB 2002). Printouts of articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public. TMEP §710.01(b). In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-1 (TTAB 1998).
If the applicant responds to this refusal, the applicant is asked the following questions:
1.) 1.) Are the goods based on biological principles or do they have an effect by natural means?
This question must be answered as the information is needed to determine the registrability of the mark. 37 C.F.R.§ 2.61(b).
Supplemental Register
Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal by amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
Although Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
The identification of goods is unacceptable as indefinite because some of the terms are overly broad so that the goods are vague and/or could fall into a different international class. TMEP §§1402.01. Specifically, the term “live plants” needs further clarification. Suggestions and explanation is incorporated into the identification proposed below. The Applicant may adopt any or all of the following identifications, if accurate:
Live plants, namely, __________{indicate type of plant} for domestic and commercial use; Grass seed for domestic and commercial use. IC 31
If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to the appropriate International Classes, and/or amend to add additional classes. 37 C.F.R. Sections 2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.
To the extent the suggested identification of goods/services is incomplete or inaccurate, the applicant is advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at www.uspto.gov under the heading Trademarks and the subheadings Guidance and Manuals and Legal Resources or at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual./
Please note that, while the identification of goods/services may be amended to clarify or limit the goods/services, adding to the goods/services or broadening the scope of the goods/services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods/services that are not within the scope of the goods/services set forth in the present identification.
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.
/Sanjeev Vohra/
Sanjeev Vohra
Examining Attorney
Law Office 110
571.272.5885 - Work
571.273.5885 - Fax
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.