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: 8/24/2015

 

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.

 

ACTIVITIES NOT A SERVICE: THIS PARTIAL REFUSAL APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

 

Registration is refused because the activities recited in the identification of services are not registrable services as contemplated by the Trademark Act.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§1301.01 et seq.

 

The activities set forth as services in an application are reviewed using the following criteria to determine whether the services are registrable:

 

(1) A service is a real activity, not an idea, concept, process, or system.

 

(2) A service is performed primarily for the benefit of someone other than the applicant.

 

(3) A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.

 

TMEP §1301.01(a); see In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89, 90 (TTAB 1984); In re Integrated Res., Inc., 218 USPQ 829, 831 (TTAB 1983); In re Landmark Commc’ns, Inc., 204 USPQ 692, 695 (TTAB 1979).

 

In this case, the description set forth in the identification of services is as follows:  “Milling, grading, cleaning, blending, sorting, sizing, bagging, containerizing, packaging, mixing and laboratory analysis of seed products, food mixtures and food ingredients; Grinding, pelletizing, mixing and packaging feed products” and “Printed publication services, namely, the provision of a newsletter providing information regarding wheat and barley for distribution to others.”  These activities are not registrable services because they appear to be ancillary to applicant’s primary service of selling these goods to its customers. Publication of an applicant’s own periodical is not a registrable service because it is done primarily for applicant’s own benefit and not for the benefit of others.  TMEP §1301.01(b)(iii); see In re Alaska Nw. Publ’g Co., 212 USPQ 316 (TTAB 1981); In re Landmark Commc’ns, Inc., 204 USPQ 692 (TTAB 1979); In re Television Digest, Inc., 169 USPQ 505 (TTAB 1971).

 

 

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Informalities :

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Description of Mark

 

The description of the mark uses broad, vague language that does not accurately describe the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description that identifies all literal elements as well as any design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02. 

 

Therefore, applicant must provide a more detailed description of the applied-for mark.  The following is suggested:

 

The mark consists of the literal element ‘G3’ with three curve designs on the left.

 

 

GENERAL PARTNERS:

 

The names of the general partners in the partnership have not been provided in the application.  Therefore, applicant must specify the names, legal entities and national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation (for businesses) of all general partners.  37 C.F.R. §2.32(a)(3)(iii); TMEP §§803.03(b), 803.04.

 

The following format should be used: 

 

“_____________________, a partnership organized under the laws of _______________, composed of _______________ (specify name, legal entity, and citizenship of each individual general partner; and/or name, legal entity, and state or country of incorporation or organization of each juristic general partner).”

 

TMEP §803.03(b).

 

IDENTIFICATION OF GOODS AND SERVICES:

 

The identification of goods and services is indefinite and must be clarified because the wording is overly broad and refers to goods and services properly classified in other international classes.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate:    

 

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 §§1402.06 et seq., 1402.07.

 

International Class 1: gluten for the food industry 

 

International Class 22: hemp

 

International Class 29: dried soybeans; hulled sunflower seed; cold pressed flax seed oil for culinary purposes; cold pressed canola oil 

 

International Class 30: processed wheat, wheat silage [this item is properly classified in class 31]; processed oats, milled flax seeds; soybean molasses, oilseeds [this item is properly classified in class 31], agricultural seeds [this item is properly classified in class 31]; pulse filed crops, seed treatments and other crop inputs to be used in agriculture namely [applicant must indicate the common commercial name of the goods – applicant is advised that these goods may most likely be classified in class 31]; rye flour, crushed barley, grits, processed bran, wheat and durum flour, buckwheat flour, wheat germ for human consumption, gluten [this item needs clarification and is properly classified in class 1]; alfalfa [this item needs clarification and is properly classified in class 31], canola [this item needs clarification and is properly classified in class 31], hulled sunflower seed [this item is properly classified in class 29], unbleached white flour, sunflower flax granola, cold pressed flax seed oil [this item needs clarification and is properly classified in class 29], processed oats, namely oat groats, rolled oats, steel cut oats, instant oats;  whole wheat flour, rye flour, whole wheat pastry flour, processed power grains hot cereal, cold pressed canola oil [this item needs clarification and is properly classified in class 29], prairie flax bread; pasture/hay [this item needs clarification and is properly classified in class 31]; native grass; organic whole leaf barley grass; barley grass [these items are properly classified in class 31]; hemp [this item is properly classified in class 22]; processed corn, namely cracker corn; corn meal

 

International Class 31: unprocessed wheat; unprocessed wheat silage; unprocessed oats; unprocessed flax seeds; agricultural seeds, namely soybeans; unprocessed oil seed; rye seed; unprocessed barley; unprocessed buckwheat; wheat germ for animal consumption; unprocessed edible seeds, namely alfalfa seeds; unprocessed oil seed, namely canola; hay; native grass; organic whole leaf barley grass; barley grass

 

International Class 35: Advertising and Marketing services, namely, advertising and marketing the goods and services of others; on-line advertising services, namely, advertising the goods and services of others; On-line agricultural services that provide information to farmers, namely, weather data, commodity prices and agricultural news to help them better produce and market food, feed, fuel and fibre [these services are classified by the subject matter of the information];  On-line agricultural support tools for farmers, namely, agronomic models based upon data derived from comprehensive and sustainable networks of weather stations [these services require clarification and is properly classified in class 44]; Presentation of seminars and conferences relating to discussions of matters relating to grains, oils seeds, special crops and livestock [these services require clarification and is properly classified in class 41];  Market research services in the field of wheat, barley, grains and cereals; Operation of a business for others, namely dealing in the retail and wholesale sale of grains and food products; Processing and packaging of wheat, barley, grains and cereals [these services require clarification and is properly classified in class 39 and 41]; Milling, grading, cleaning, blending, sorting, sizing, bagging, containerizing, packaging, mixing and laboratory analysis of seed products, food mixtures and food ingredients; Grinding, pelletizing, mixing and packaging feed products [ancillary services]; Retail store and wholesale distributorship services sale of agricultural products, namely, agricultural seeds, oilseed and pulse field crops, seed treatments and other crop inputs; Operation of a network of business networking of dealers who are engaged in the retail or wholesale sale of agricultural products, namely, agricultural seeds for cereal, oilseed and pulse field crops, seed treatments and other crop inputs

 

International Class 36: On-line agricultural services that provide information to farmers, namely, commodity quotations 

 

International Class 39: Packaging goods for transportation, namely of wheat, barley, grains and cereals

 

International Class 40: Processing of wheat, barley, grains and cereals 

 

International Class 41: Printed publication services, namely, the provision of a newsletter providing information regarding wheat and barley for distribution to others [ancillary services]; On-line publication services, namely, the provision of an online newsletter providing information regarding wheat and barley for distribution to others on-line; Educational services, namely arranging seminars and conferences in the field of grains, oils seeds, special crops and livestock

 

International Class 42: On-line agricultural services that provide information to farmers, namely, weather information;  

 

 

International Class 44: Agronomic consulting services; agricultural advice services to provide recommendations for applying crop nutrients, fertilizer and chemical compounds; On-line agricultural services that provide information to farmers, namely, agricultural advice to help them better produce and market food, feed, fuel and fibre; On-line agricultural support tools for farmers, namely, providing agronomic consulting services by use of an agronomic model based upon data derived from comprehensive and sustainable networks of weather stations   

 

 

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.

 

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 Sections 1(b) and 44:

 

(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 12 classes; however, applicant submitted a fee(s) sufficient for only 4 classes.  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 Sections 1(b) and 44 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.

 

DUAL BASIS:

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, the application does not include a copy of a foreign registration or a statement indicating whether applicant intends to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03.  It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.

 

Therefore, applicant must clarify the basis in the application by satisfying one of the following:

 

(1)        If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify.  In addition, (a) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (b) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin.  See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.01, 1004, 1016.  A copy of the foreign registration must be a copy of a document that issued to applicant by or was certified by the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If the foreign registration is not written in English, then applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).  If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

(2)        If applicant does not intend to rely on Section 44(e) as a basis for registration but still wants to retain the Section 44(d) priority filing date, applicant must so specify and request that the mark be approved for publication based solely on the Section 1(b) basis.  See TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

 

GENERAL INFORMATION :

 

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).

 

 

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

 

 

/Won T. Oh/

Law Office 114

(571)272-9204

won.oh@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 8/24/2015 FOR U.S. APPLICATION SERIAL NO. 86622711

 

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 8/24/2015 (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.