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 OR E-MAILING DATE. 

 

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

 

THIS IS A FINAL ACTION

 

This letter responds to the applicant's communication filed on October 26, 2006. 

The applicant has argued (1)) amended the identification of goods and services.  The examining attorney acknowledges and accepts the applicant’s amendment.  The examining attorney has considered the applicant's arguments as to the 2(e)(1) refusal carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(e)(1) is maintained and made FINAL. 

2(e)(1) Final Refusal

Registration was refused under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), because the proposed mark for which registration is sought is merely descriptive of the identified goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

The applicant applied for the mark BIO-RATIONAL for Live plants, namely, annual and perennial flowers and ornamental shrubs for domestic and commercial use; grass seed for domestic and commercial use.

The applicant argued that the mark BIO-RATIONAL is not descriptive because:

 

-         the proposed mark does not immediately convey the nature, quality or characteristic of the applicant’s goods and services

-         the examining attorney has offered inappropriate evidence of descriptiveness

-         the examining attorney improperly found descriptiveness in the abstract

-         doubt regarding the descriptiveness should be resolved in the Applicant’s favor.

 

The examining attorney is not persuaded by the applicant’s analysis.  As stated in the first Office Action, the Trademark Trial and Appeal Board and other courts have consistently held that 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/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 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).

Here, the applicant stated in its response that the live plants and grass seed goods will “be bred for selected desirable traits including, but not limited to, heat tolerance, herbicide resistance, drought tolerance, and disease resistance.”   Based on this admission, the proposed mark BIO-RATIONAL describes two attributes of the goods.

1.  The plants and grass seed will have been bred with herbicide resistance. 

2.  The plants and grass seed will have been bred with disease resistance.

 Based on this evidence, the proposed mark immediately conveys two attributes of the applicant’s goods.   As evidenced in the first Office Action, dated April 24, 2006, the term BIORATIONAL has been defined as “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.”  Thus, the applicant’s plants and grass seeds, having a function and a characteristic of herbicide and disease resistance, exhibit biorational properties.

Regarding the applicant’s argument that the examining attorney has offered inappropriate evidence, the evidence provided in the first Office Action was demonstrative of the descriptiveness of the applicant’s mark relative to the goods proposed by the applicant.  The examining attorney refered to the articles from the search of the Internet using the GOOGLE® search engine in which “BIORATIONAL” appeared in several stories.  See previously sent attachments.  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).

 

Regarding the applicant’s argument that the examining attorney “improperly found descriptiveness in the abstract”, the evidence of record suggest otherwise.  As noted in the first Office Action, and again in this second Office Action, 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).  As stated earlier, the applicant mark, “BIORATIONAL” describes a quality, characteristic, function, feature, and purpose of the relevant goods, namely herbicide and disease resistant plants and grass seed.

 

Regarding the applicant’s argument that “doubt regarding the descriptiveness should be resolved in the Applicant’s favor” while it is true that in a likelihood of confusion analysis that any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant, no such doubt exists in this particular case.  The applicant’s mark is clearly descriptive of the relative goods, and in addition, the case laws cited by the applicant relies upon a subjective analysis of a mark that is intentionally misspelled, a particular scenario that does not have any resemblance to the instant application.     

 

For the foregoing reasons, the mark is refused registration on the Principal Register under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1), because the mark merely describes the goods and services.

This refusal is made final.

 

Supplemental Register as an Option to Overcoming This Refusal

Although the trademark examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal(s) under Section 2(e)(1) 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.

Please note that the mark in an application under Trademark Act Section 1(b), 15 U.S.C. §1051(b), is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 or statement of use under 37 C.F.R. §2.88 has been timely filed.  37 C.F.R. §2.47(c); TMEP §815.02, 816.02 and 1102.03.  When such an application is changed from the Principal Register to the Supplemental Register, the effective filing date of the application is the date of filing of the allegation of use.  37 C.F.R. §2.75(b); TMEP §§206.01 and 816.02.

Although Supplemental Register registration does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

 

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act, 15 U.S.C. §1052(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

Proper Response to Final Action

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

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:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  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, and 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.