UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79176292
MARK: ADENA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: ALLFLEX EUROPE
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1273566
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4038931. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
Here, the marks are:
ADENA in special form
ADINA
The literal elements of the marks differ only in a single soft sounding vowel. Thus, the marks are visually similar as they share 4 of 5 letters and similar in sound. Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012). Thus, the marks are similar overall.
Further, applicant’s stylization does not remove the similarity as the registered mark is in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). Thus, the marks are similar overall.
Further, the services are related. The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Here, registrant provides “providing consumer information and links to websites of others featuring consumer information about healthy food and beverages and ingredients of same.” Applicant provides “Commercial information and advice for consumers” and “commercial information and advice for consumers on the composition, quality, origin, control and traceability of foodstuffs.” Applicant uses broad wording to describe its consumer advice informational services, and this wording is presumed to encompass all services of the type described, including those in registrant’s more narrow identification. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)). Accordingly, the services of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.
The marks are similar. The services are related. Thus, there is a strong likelihood of confusion and registration must be denied.
Note that this bar to registration applies to the following services only: “Commercial information and advice for consumers” and “commercial information and advice for consumers on the composition, quality, origin, control and traceability of foodstuffs.”
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
For the reasons set forth below, the identification of services needs clarification because it is, in part, indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01. The portion of the identification that is unacceptable is underlined below. If not underlined, then that portion of the identification is acceptable.
Applicant identified the following services:
“Commercial information and advice for consumers; product demonstration; commercial information for consumers on the nutritional and energy values of foodstuffs for animals; commercial information for consumers on the composition and combination of foodstuffs for animals; commercial information and advice for consumers on the composition, quality, origin, control and traceability of foodstuffs; organization of promotional and advertising activities for developing customer loyalty; organization of commercial operations with a view to developing customer loyalty; presentation of goods on all communication media, for retail sale; retail or wholesale services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals; internet sale services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals; import and export services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals; accounts receivable management services in the field of identification of animals and/or genome analysis; computer file management services; collection and systematization of data in a central file; compilation of information in the field of identification of animals and/or genome analysis; computerized database management; management of computerized databases in the field of identification of animals, animal DNA and/or genome analysis; compilation and systemization of information in the field of identification of animals, animal DNA and/or the genome analysis of data in computer databases” in International Class 035; and
“Quality control services for certification and warranty purposes; quality testing of products for certification purposes; testing, analysis and evaluation of products and services of others with a view to their certification; monitoring of the origin of foodstuffs and animals for certification and warranty purposes; quality control services of foodstuffs for certification, warranty and identification purposes; control of foodstuffs; awarding compliance certificates and seals of quality (quality control); quality evaluation (quality control); quality evaluation in the field of animal identification; technical studies provided by engineers, auditing and evaluation of foodstuffs for animals for the purpose of awarding labels (quality control); surveying (engineering work); testing of foodstuffs for animals; scientific laboratory services for identifying, evaluating and controlling foodstuffs for animals; technical advice and information to consumers on the identification and quality of foodstuffs for animals; technical advice and information on the composition, quality, origin, control and traceability of foodstuffs; technical advice and information on the nutritional and energy values of foodstuffs for animals; technical advice and information on the composition and combination of foodstuffs for animals; analysis for the installation of a computerized animal management system; design of software allowing for the identification of foodstuffs; design of computer programs and computer software in the field of identification of animals, management of animals and/or genome analysis; services for conversion of computer programs and data (other than physical conversion) in the field of identification of animals, management of animals and/or genome analysis; conversion of data from physical to electronic media in the field of identification of animals, management of animals and/or genome analysis; research and development for others in the field of identification of animals, management of animals and/or genome analysis; technical project studies in the field of identification of animals, management of animals and/or genome analysis; development (design), installation, maintenance, updating or rental of software in the field of identification of animals, management of animals and/or genome analysis; design, development and maintenance of databases in the field of identification of animals, management of animals; laboratory research and analysis services; scientific laboratory analysis; preparation of biological samples for testing and analysis in research laboratories; biological research services; bacteriological research services; chemical research services; scientific and biological analysis and research services for controlling the composition, quality, origin and traceability of foodstuffs and/or animal DNA; computer-aided scientific research, testing and analysis services; design and development of methods of analysis and testing; biological tests for scientific research purposes; technical data analysis services relating to animal DNA; biological analysis; structural and functional analysis of genomes; genetic research; scientific research in the field of genetics; DNA testing for scientific research; electronic storage of data relating to genome analysis; design of genomics; genetic fingerprinting services” in International Class 042.
CLASS 035 SERVICES
The phrases “commercial information for consumers on the nutritional and energy values of foodstuffs for animals”, “commercial information for consumers on the composition and combination of foodstuffs for animals”, and “commercial information and advice for consumers on the composition, quality, origin, control and traceability of foodstuffs” are indefinite, because they do not make clear that applicant is providing an information service. Therefore, applicant must amend and may adopt the following suggestion, if accurate {please note that suggestions for amended wording appear in bold.}:
“providing commercial information for consumers on the nutritional and energy values of foodstuffs for animals” in International Class 035;
“providing commercial information for consumers on the composition and combination of foodstuffs for animals” in International Class 035; and
“providing commercial information and advice for consumers on the composition, quality, origin, control and traceability of foodstuffs” in International Class 035.
The wording “organization of promotional and advertising activities for developing customer loyalty” is indefinite, because it does not specify the type of activities that are organized by the applicant. Therefore, applicant must amend to further specify and may adopt the following suggestion, if accurate {please note that the language in italics is for informational purposes only and must not appear in the final identification.}:
“organization of promotional and advertising activities in the nature of _____________ {applicant to indicate the type of activities, e.g., viral marketing programs, etc.} for developing customer loyalty” in International Class 035.
The wording “organization of commercial operations with a view to developing customer loyalty” is indefinite, because it does not specify the type of operations that are organized by the applicant. Therefore, applicant must amend to further specify and may adopt the following suggestion, if accurate:
“organization of commercial operations in the nature of _____________ {applicant to indicate the type of activities, e.g., exhibitions for advertising purposes, , etc.} with a view for developing customer loyalty” in International Class 035.
The wording “presentation of goods on all communication media, for retail sale” is no longer acceptable as of November 3, 2011. However, applicant may either clarify the underlying nature of its services or substitute the following wording, if accurate:
“Providing television home shopping services in the field of general consumer merchandise” in International Class 035.
The wording “retail or wholesale services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals” is indefinite, because it does not make clear that applicant provides store services. In addition, it uses the open-ended terminology “or”, which is not permitted in identifications. The following amendment is suggested:
“retail and wholesale store services featuring apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals” in International Class 035.
The wording “internet sale services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals” is indefinite, because it is unclear the underlying nature of applicant’s services. If applicant provides an online retail store, then applicant should indicate this accordingly. The following is suggested:
“online retail store services featuring apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals” in International Class 035.
The wording “import and export services for apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, apparatus and instruments for identifying foodstuffs for animals” is indefinite, because as written, it could encompass transportation services in Class 039. However, because this application was filed under Section 66(a), applicant may not change the classification of services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. § 2.85(d); TMEP §§ 1401.03(d), 1904.02(b). Therefore, any modification to this wording must identify services in International Class 035, the classification specified in this application for these services. Applicant should note that amending “import and export services” to “import and export agencies” would clarify that applicant is a business that assists in arranging for the shipping of goods of others, but does not actually provide the transportation services themselves (thereby clarifying that the services belong in Class 035). Therefore, the following amendment is suggested:
“import and export agencies in the field of apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals” in International Class 035.
The wording “accounts receivable management services in the field of identification of animals and/or genome analysis” is indefinite, because the underlying nature of applicant’s services is unclear. If applicant provides inventory management services in the field of animal identification and genomic material, then applicant should indicate this accordingly. The following is suggested:
“inventory management services related to identification of animals and genomic material” in International Class 035.
The wording “collection and systematization of data in a central file” is indefinite, because it is unclear the purpose of applicant’s collection services. However, in order to be a class 035 service, the collection of the data must be for business purposes. Therefore, the following amendment is suggested:
“Business services, namely, collection and systematization of data in a central file for business purposes” in International Class 035.
The wording “compilation of information in the field of identification of animals and/or genome analysis” is indefinite, because it is unclear the underlying nature of applicant’s services. Therefore, applicant must further specify and may adopt the following, if accurate:
“Services consisting of the compilation and systemization of data related to the identification of animals and genomic analysis” in International Class 035.
CLASS 042 SERVICES
The wording “control of foodstuffs” is indefinite, because the underlying nature of applicant’s services is unclear. Therefore, applicant must amend to further clarify and may adopt the following, if accurate:
“quality control for others of foodstuffs” in International Class 042.
The wording “awarding compliance certificates and seals of quality (quality control)” is indefinite, because the underlying nature of applicant’s services is unclear. In addition, the phrase has parentheses, which are not permitted in identifications. Therefore, applicant must amend to further clarify and incorporate the parenthetical information into the identification. The following amendment is suggested:
“Quality control for others that results in the awarding of compliance certificates and seals of quality” in International Class 042.
The wording “quality evaluation (quality control)” is unacceptable, because it contains parentheses. Therefore, applicant must amend to incorporate the parenthetical information into the identification. The following amendment is suggested:
“quality evaluation, namely, quality control for others” in International Class 042.
The wording “quality evaluation in the field of animal identification” is indefinite, because it is unclear the goods or products that applicant is evaluating. Therefore, applicant must amend to further clarify and may adopt the following, if accurate:
“quality evaluation of the animals of others to assure compliance with industry standards” in International Class 042.
The wording “technical studies provided by engineers, auditing and evaluation of foodstuffs for animals for the purpose of awarding labels (quality control)” is indefinite, because the underlying nature of applicant’s services is unclear. In addition, the phrase has parentheses, which are not permitted in identifications. Therefore, applicant must amend to further clarify and incorporate the parenthetical information into the identification. The following amendment is suggested:
“technical research, safety auditing and testing of animal foods for purposes of quality control that result in the awarding of a label certifying compliance with industry standards” in International Class 042.
The wording “surveying (engineering work)” is unacceptable, because it contains parentheses. Therefore, applicant must amend to incorporate the parenthetical information into the identification. The following amendment is suggested:
“Engineering work in the nature of surveying” in International Class 042.
The phrases “technical advice and information to consumers on the identification and quality of foodstuffs for animals”, “technical advice and information on the composition, quality, origin, control and traceability of foodstuffs”, “technical advice and information on the nutritional and energy values of foodstuffs for animals”, and “technical advice and information on the composition and combination of foodstuffs for animals” are indefinite, because it is not clear that applicant provides technical advice related to Class 042 services. Specifically, applicant should note that technical advice is classified according to the subject matter of the advice. Therefore, applicant must amend to clearly indicate that the advice provided is properly classified in Class 042. The following is suggested:
“technical advice and information in the field of food research provided to consumers related to the quality of foodstuffs for animals” in International Class 042;
“technical advice and information in the field of food research related to the composition, quality, origin, control and traceability of foodstuffs” in International Class 042;
“technical advice and information in the field of food research related to the nutritional and energy values of foodstuffs for animals” in International Class 042; and
“technical advice and information in the field of food research related to the composition and combination of foodstuffs for animals” in International Class 042.
The wording “analysis for the installation of a computerized animal management system” is indefinite, because the underlying nature of applicant’s services is unclear. The following amendment is suggested:
“providing technical consultation for installing a computerized animal management computer system” in International Class 042.
The wording “services for conversion of computer programs and data (other than physical conversion) in the field of identification of animals, management of animals and/or genome analysis” is unacceptable, because it contains parentheses. Therefore, applicant must amend to incorporate the parenthetical information into the identification. The following amendment is suggested:
“Data conversion of computer programs and data, not physical conversion, in the field of identification of animals, management of animals and/or genome analysis” in International Class 042.
The wording “research and development for others in the field of identification of animals, management of animals and/or genome analysis” is indefinite, because it is unclear that the research is scientific in nature, and this is required for classification purposes. Therefore, the following amendment is suggested:
“scientific research and development for others in the field of identification of animals, management of animals, and genome analysis” in International Class 042.
The wording “technical project studies in the field of identification of animals, management of animals and/or genome analysis” is indefinite, because the underlying nature of applicant’s services is unclear. The following amendment is suggested:
“Conducting technical feasibility studies in the field of animal identification and management of animals” in International Class 042.
The wording “development (design), installation, maintenance, updating or rental of software in the field of identification of animals, management of animals and/or genome analysis” is unacceptable, because it contains parentheses. Therefore, applicant must amend to incorporate the parenthetical information into the identification. In addition, applicant must replace the open-ended terminology “or” with “and”. The following amendment is suggested:
“Design, development, installation, maintenance, updating, and rental of computer software in the field of identification of animals, management of animals and genome analysis” in International Class 042.
The wording “laboratory research and analysis services” is indefinite, because it does not specify the subject matter or field of the analysis services. Therefore, applicant must amend to further specify and may adopt the following, if accurate:
“scientific laboratory research and analysis services in the field of _________________ {applicant to indicate the subject matter or field, e.g., genomic research, etc.}” in International Class 042.
The wording “scientific laboratory analysis” is indefinite, because it is unclear the underlying nature of applicant’s services. Therefore, applicant must amend to further specify and may adopt the following, if accurate:
“scientific laboratory analysis, namely, scientific laboratory services in the field of _________________ {applicant to indicate the subject matter or field, e.g., genomic research, etc.}” in International Class 042.
The wording “computer-aided scientific research, testing and analysis services” is indefinite, because it does not specify the field or subject matter of the testing and analysis services, and this information is necessary for the Office to make proper likelihood of confusion determinations. Therefore, applicant must amend and may adopt the following, if accurate:
“computer-aided scientific research, testing and analysis services in the field of _________________ {applicant to indicate the subject matter or field, e.g., genomic research, etc.}” in International Class 042.
The wording “design and development of methods of analysis and testing” is indefinite, because it is not clear the type of methods that are designed by the applicant, and this information is necessary for classification purposes. Therefore, the following amendment is suggested:
“design and development of scientific research methods of analysis and testing” in International Class 042.
The wording “biological tests for scientific research purposes” is indefinite, because the underlying nature of applicant’s services is unclear. The following amendment is suggested:
“biological tests for scientific research purposes, namely, providing reagent sample testing and diagnostic services for others in the fields of science and research related thereto” in International Class 042.
The wording “technical data analysis services relating to animal DNA” is indefinite, because it is not clear that the services are provided for scientific research purposes, and this information is necessary for classification purposes. Therefore, the following amendment is suggested:
“technical data analysis services relating to animal DNA for scientific research purposes” in International Class 042.
The wording “biological analysis” indefinite, because the underlying nature of applicant’s services is unclear. The following amendment is suggested:
“biological analysis in the nature of biological research” in International Class 042.
The wording “structural and functional analysis of genomes” is indefinite, because it is unclear that the analysis is scientific in nature, and this is required for classification purposes. Therefore, the following amendment is suggested:
“structural and functional analysis of genomes for scientific research purposes” in International Class 042.
The wording “genetic research” is indefinite, because it is unclear that the analysis is scientific in nature, and this is required for classification purposes. Therefore, the following amendment is suggested:
“genetic research for scientific research purposes” in International Class 042.
The wording “design of genomics” is unclear. The following amendment is suggested:
“Design of genomes for scientific research purposes.”
The wording “genetic fingerprinting services” is indefinite, because it is not clear that the services are provided for scientific research purposes, and this information is necessary for classification purposes. Therefore, the following amendment is suggested:
“genetic testing for scientific research purposes in the nature of genetic fingerprinting services” in International Class 042.
To summarize the above suggested changes, applicant may adopt the following, if accurate:
“Commercial information and advice for consumers; product demonstration; providing commercial information for consumers on the nutritional and energy values of foodstuffs for animals; providing commercial information for consumers on the composition and combination of foodstuffs for animals; providing commercial information and advice for consumers on the composition, quality, origin, control and traceability of foodstuffs; organization of promotional and advertising activities in the nature of _____________ {applicant to indicate the type of activities, e.g., viral marketing programs, etc.} for developing customer loyalty; organization of commercial operations in the nature of _____________ {applicant to indicate the type of activities, e.g., exhibitions for advertising purposes, , etc.} with a view for developing customer loyalty; providing television home shopping services in the field of general consumer merchandise; retail and wholesale store services featuring apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals; online retail store services featuring apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals; import and export agencies in the field of apparatus and instruments for identifying animals, apparatus and instruments for taking animal tissue samples, and apparatus and instruments for identifying foodstuffs for animals; inventory management services related to identification of animals and genomic material; computer file management services; Business services, namely, collection and systematization of data in a central file for business purposes; Services consisting of the compilation and systemization of data related to the identification of animals and genomic analysis; computerized database management; management of computerized databases in the field of identification of animals, animal DNA and/or genome analysis; compilation and systemization of information in the field of identification of animals, animal DNA and/or the genome analysis of data into computer databases” in International Class 035; and
“Quality control services for certification and warranty purposes; quality testing of products for certification purposes; testing, analysis and evaluation of products and services of others with a view to their certification; monitoring of the origin of foodstuffs and animals for certification and warranty purposes; quality control services of foodstuffs for certification, warranty and identification purposes; quality control for others of foodstuffs; Quality control for others that results in the awarding of compliance certificates and seals of quality; quality evaluation, namely, quality control for others; quality evaluation of the animals of others to assure compliance with industry standards; technical research, safety auditing and testing of animal foods for purposes of quality control that result in the awarding of a label certifying compliance with industry standards; Engineering work in the nature of surveying; testing of foodstuffs for animals; scientific laboratory services for identifying, evaluating and controlling foodstuffs for animals; technical advice and information in the field of food research provided to consumers related to the quality of foodstuffs for animals; technical advice and information in the field of food research related to the composition, quality, origin, control and traceability of foodstuffs; technical advice and information in the field of food research related to the nutritional and energy values of foodstuffs for animals; technical advice and information in the field of food research related to the composition and combination of foodstuffs for animals; providing technical consultation for installing a computerized animal management computer system; design of software allowing for the identification of foodstuffs; design of computer programs and computer software in the field of identification of animals, management of animals and/or genome analysis; data conversion of computer programs and data, not physical conversion, in the field of identification of animals, management of animals and/or genome analysis; conversion of data from physical to electronic media in the field of identification of animals, management of animals and/or genome analysis; scientific research and development for others in the field of identification of animals, management of animals, and genome analysis; conducting technical feasibility studies in the field of animal identification and management of animals; design, development, installation, maintenance, updating, and rental of computer software in the field of identification of animals, management of animals and genome analysis; design, development and maintenance of databases in the field of identification of animals, management of animals; scientific laboratory research and analysis services in the field of _________________ {applicant to indicate the subject matter or field, e.g., genomic research, etc.}; scientific laboratory analysis, namely, scientific laboratory services in the field of _________________ {applicant to indicate the subject matter or field, e.g., genomic research, etc.}; preparation of biological samples for testing and analysis in research laboratories; biological research services; bacteriological research services; chemical research services; scientific and biological analysis and research services for controlling the composition, quality, origin and traceability of foodstuffs and/or animal DNA; computer-aided scientific research, testing and analysis services in the field of _________________ {applicant to indicate the subject matter or field, e.g., genomic research, etc.}; design and development of scientific research methods of analysis and testing; biological tests for scientific research purposes, namely, providing reagent sample testing and diagnostic services for others in the fields of science and research related thereto; technical data analysis services relating to animal DNA for scientific research purposes; biological analysis in the nature of biological research; structural and functional analysis of genomes for scientific research purposes; genetic research for scientific research purposes; scientific research in the field of genetics; DNA testing for scientific research; electronic storage of data relating to genome analysis; design of genomes for scientific research purposes; genetic testing for scientific research purposes in the nature of genetic fingerprinting services” in International Class 042.
In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv). In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).
In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Mark Description
Applicant must submit a more accurate and concise description of the literal and design elements in the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The color white does not appear to be a feature of the mark. Thus, applicant must state that it is for background only in the mark description. The following is suggested, if accurate:
The mark consists of the stylized wording ADENA. The first letter A is depicted in gray with the horizontal bar protruding towards the left depicted in blue; the letter D is depicted in gray; the letter E comprises three bars, the middle bar is depicted in green and the upper and lower bars are depicted in blue; the letter N is depicted in gray; the last letter A is depicted in gray with the horizontal bar protruding towards the right depicted in blue. The color white appears as background only and is not a feature of the mark.
Information Required
Applicant must explain whether “ADENA” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Applicant must also explain whether this wording identifies a geographic place or has a meaning in a language other than English. See 37 C.F.R. §2.61(b); TMEP §814.
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp
/Daniel F. Capshaw/
Daniel F. Capshaw
Examining Attorney
Law Office 110
571-272-9356
daniel.capshaw@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.