To: | Continental Mills, Inc. (pctrademarks@perkinscoie.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86228979 - NON GMO - 00481.4000.0 |
Sent: | 6/30/2014 9:25:10 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86228979
MARK: NON GMO
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Continental Mills, Inc.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 6/30/2014
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES that applicant must address:
REQUIREMENT FOR A DEFINITE & PROPERLY CLASSIFIED IDENTIFICATION OF GOODS
Please note that he use or intended use of the applied-for mark on goods and/or services that do not in fact have or exhibit a lack of genetically modified organisms, or are not NON GMO, is or will be deceptive. See TMEP §1203.02-.02(b). To avoid a deceptiveness refusal, applicant must amend the identification to indicate that all of its goods possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. Merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Applicant has classified goods “raw nuts” and “raw peanuts” in International Class 29; however, the proper classification is International Class 31. Therefore, applicant must either (1) add International Class 31 to the application and reclassify these goods and/or services in the proper international class, or (2) delete the wording “trail mix consisting primarily of raw nuts; trail mix consisting primarily of fresh peanuts; snack mixes consisting primarily of raw nuts; snack mixes consisting primarily of fresh peanuts” and instances of “raw peanuts” and “raw nuts” from the application. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
In light of the foregoing, applicant may adopt the following identification of goods:
International Class 29: Organic and non-organic foods, namely, dried fruit and vegetables, dehydrated fruit and vegetable snacks, processed fruits, processed nuts, and raisins for use with breakfast cereals and/or yogurt; snack mixes consisting of dehydrated fruit and processed nuts; nut and seed-based snack bars; dehydrated fruit snacks, nut and seed-based snack bars and trail mix consisting primarily of processed nuts and dried fruit and also including blended yogurt chips; snack mix consisting of wasabi peas, processed nuts, processed edamame and also including sesame sticks; kale chips; trail mixes consisting primarily of processed nuts and dried fruit; trail mixes consisting primarily of processed nuts, dried fruit and also including chocolate; trail mixes consisting primarily of processed nuts and seeds; trail mixes consisting primarily of processed nuts and also including processed grains; trail mixes consisting primarily of processed nuts, dried fruit and also including confectionery items; trail mixes consisting primarily of processed nuts, dried fruit and also including coconut milk-based chips; snack mixes consisting of processed nuts and seeds; snack mixes consisting primarily of processed nuts and also including processed grains; snack mixes consisting of processed nuts and also including processed cereal; snack mixes consisting primarily of processed nuts and also including cereal-based snack foods; snack mix consisting of processed nuts, seeds, beans or legumes; frozen vegetables and cooked vegetables; all of the foregoing being free of genetically modified organisms
International Class 31: Organic and non-organic foods, namely, raw nuts, fresh peanuts and raw seeds in the nature of unprocessed edible seeds; trail mix consisting primarily of raw nuts; trail mix consisting primarily of fresh peanuts; snack mixes consisting primarily of raw nuts; snack mixes consisting primarily of fresh peanuts; trail mix consisting primarily of raw seeds in the nature of unprocessed edible seeds; snack mixes consisting primarily of raw seeds in the nature of unprocessed edible seeds; all of the foregoing being free of genetically modified organisms
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.
ADVISORY- MULTICLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
DISCLAIMER REQUIRED
The term “NON” is defined as, “a lack of.” See Oxford Dictionaries, http://www.oxforddictionaries.com/us/definition/american_english/non-. “GMO” is acronym that represents the wording “genetically modified organism” See Id., http://www.oxforddictionaries.com/us/definition/american_english/GMO. Thus, by definition, this wording means without genetically modified organisms. The wording “NON GMO” is commonly used in relation to food products in a descriptive manner to inform consumers that the goods do not contain genetically modified organisms. See e.g., http://www.nuts.com/non-gmo/, http://www.heartlandflax.com/, http://www.vitacost.com/trail-mix-4. Additionally, this term is treated descriptively by the Office. Therefore, as applicant’s goods are free of genetically modified organisms, the term “NON GMO” is merely descriptive in relation to applicant’s goods and must be disclaimed.
The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “NON GMO” apart from the mark as shown.
TMEP §1213.08(a)(i).
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP§1213. It does not affect the appearance of the applied-for mark. A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing. TMEP §§1213, 1213.10.
The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). See TMEP §§1213, 1213.03. The following cases further explain the disclaimer requirement: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
CORRESPONDENCE GUIDELINES
Instructions for responding to this Office action are located below the signature block.
/N. Gretchen Ulrich/
Trademark Attorney-Advisor
Law Office 113
U.S. Patent & Trademark Office
phone: (571) 272-1951
gretchen.ulrich@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.