Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

REQUEST FOR RECONSIDERATION DENIED

 

ISSUE/MAILING DATE: 1/8/2015

 

Applicant’s request for reconsideration has been reviewed and is denied for the reasons stated below.  See 37 C.F.R. §2.64(b); TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a).  The Trademark Act Sections 1, 2, and 45 refusal made final in the Office action dated October 14, 2014 is maintained and continued.  See TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a).

 

Registration has been refused because the applied-for mark ALERT is used a varietal and cultivar name for live plants and flowers and as such, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §1202.12.

 

Applicant’s request for reconsideration does not raise a new issue or provide any new or compelling evidence with regard to the outstanding refusal.  Further, applicant’s analysis and arguments are not persuasive and do not overcome the refusal.  The evidence attached to the initial Office action dated March 24, 2014 from the reliable agriculture-related sources of the International Union for the Protection of New Varieties of Plants and the United States Department of Agriculture state that ALERT is the varietal name for an assortment of plants and flowers, including chrysanthemums, cucumber, potato, carrots, lettuce, wheat, ryegrass and tomato.  See also the attached evidence from the Germplasm Resources Information Network stating that ALERT is a cultivar name for a variety of beans. Applicant's broad identification of goods encompasses all types of plants and flowers, including those for which ALERT is used as a varietal and cultivar name.

 

Accordingly, the request is denied.

Response Option – Amend the Identification of Goods

 

As noted in the previous Office action, applicant has the option to respond by amending the identification of goods to identify specific types of live plants or flowers for which ALERT is not used as a varietal or cultivar name. For example, applicant could narrow the identification of goods to just “roses” in International Class 31.

 

For assistance with identifying and classifying the goods, 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, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

RESPONSE GUIDELINES:

 

The filing of a request for reconsideration does not extend the time for filing a proper response to a final Office action or an appeal with the Trademark Trial and Appeal Board, which runs from the date the final Office action was issued/mailed.  See 37 C.F.R. §2.64(b); TMEP §715.03, (a)(2)(B), (a)(2)(E), (c). 

 

Applicant has the remainder of the six-month response period to the final Office action to comply with and/or overcome the outstanding final refusal and/or to file an appeal with the Board.  TMEP §715.03(a)(2)(B), (c).  A response to this action can be filed online via the Trademark Electronic Application System (TEAS), using the “Request for Reconsideration after Final Office Action Form” available at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. For technical assistance with the online response form, e-mail TEAS@uspto.gov. 

 

 

 

 

/Kristin Carlson/

Trademark Examiner: LO 105

800-786-9199 (trademark helpline)

571-272-2240 (direct dial)

kristin.carlson@uspto.gov

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/8/2015 FOR U.S. APPLICATION SERIAL NO. 86135759

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 1/8/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.