UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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 identification of goods
• Advisory- multiclass application requirements
• Disclaimer requirement

 

 

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.

 

The wording “RAW SEEDS” in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01. Specifically, applicant must clarify the nature of “raw” as it pertains to its seeds. Applicant may substitute the following wording in Class 31, if accurate:  “raw seeds in the nature of unprocessed edible seeds being free of genetically modified organisms.”

 

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

 

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. 

 

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

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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

 

Applicant must insert a disclaimer of “NON GMO” in the application because it is merely descriptive of a feature and characteristic of applicant’s goods.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).

 

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 Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006); 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

 

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 §§304.01-.02, 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.

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/30/2014 FOR U.S. APPLICATION SERIAL NO. 86228979

 

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 6/30/2014 (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.