Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 2/26/2018

 

 

PREVIOUS ACTION: In a previous Office action dated July 28, 2017, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Sections 1, 2, and 45 for failure to function as a trademark.  In addition, applicant was required to satisfy the following requirements:  submit additional information about the applied-for mark, amend the identification of goods, and submit a copy of its foreign registration.

 

Based on applicant’s response, dated January 29, 2018, the trademark examining attorney notes that the following requirement has been satisfied: additional information about the applied-for mark provided.  See TMEP §§713.02, 714.04. 

 

Pending receipt of a copy of a foreign registration, action on the present application is hereby suspended, as set forth below.  See 37 C.F.R. §2.67; TMEP §§716 et seq.  Additionally, the following issues are continued and maintained for the reasons set forth below: Trademark Sections 1, 2, and 45 refusal; amendment of the identification of goods.

 

REFUSAL AND REQUIREMENT CONTINUED AND MAINTAINED

 

The following issues are continued and maintained.

 

• Section 1, 2, and 45 Refusal – Failure to Function as Varietal
• Amendment of Identification of Goods Required

 

 

SECTION 1, 2, AND 45 REFUSAL- FAILURE TO FUNCTION AS VARIETAL

 

In its response to the Sections 1, 2 and 45 refusal, applicant argued that the evidence provided in the previous Office action does not support the conclusion that the applied-for mark is known to the consumer as a varietal name.  The examining attorney finds this argument unpersuasive.  All evidence provided in the previous Office action supports the conclusion that the applied-for mark fails to function as a trademark because it is a varietal name for the applied-for goods. 

 

Specifically, with respect to applicant’s assertion that the source of the evidence is unclear rendering the evidence unreliable and unverifiable, all evidence submitted by the trademark examining attorney includes the following: (1) an image file or printout of the downloaded webpage, (2) the date and time the evidence was downloaded or accessed from the Internet, and (3) the complete URL address of the webpage.  TBMP §1208.03; see TMEP §710.01(b) (citing Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010)).  For example, the printout document provided on page 28 of the prior Office action includes the URL “https//www3.wipo.int/pluto/user/en/index.jsp” and the information “7/25/2017 3:50PM, UPOV” at the bottom.  Thus, applicant has all the information required to refute all of the submitted evidence.

 

Applicant also argues that the accuracy of the USDA evidence is questionable because it only identifies varietal names, including the applied-for mark, and their meanings and lacks other information related to the geographic origin of the variety or relative associations of the variety.  Further, applicant contends that the language “please note that even if you do see a variety name listed, it does not mean that the name has been released in the U.S.” indicate that this evidence is irrelevant to the U.S. consumer.  These arguments are also unpersuasive.  First the fact that the USDA evidence lacks any other information is irrelevant because its purpose is to establish that the applied-for mark is a varietal name for the applicant’s goods.  Second, the language related to the release of the variety name in the U.S. has no bearing on whether this evidence is relevant to consumers because the purpose of this evidence is to establish that the applied-for mark is a varietal name for applicant’s goods.  The Wikipedia evidence, discussed further below, establishes that the varietal names and applicant’s goods have and are commonly known to have the same meaning.

 

If applicant questions the validity of the USDA evidence, please be aware that the USDA is the federal executive department responsible for developing and executing federal laws related to farming, agriculture, and food.  For further information about the USDA applicant may see the attached evidence.  See http://www.usda.gov/.

 

With respect to applicant’s argument that the UPOV evidence demonstrates foreign consumer knowledge rather than US consumer knowledge of varietal names, the US is a member of the UPOV and thus this evidence indicates all of the varietal terms recognized and understood by member countries.  For further information about the relationship of the UPOV to the United States, applicant may see the attached evidence.  See http://www.upov.int/overview/en/index.html. 

 

Furthermore, applicant asserts that the applied-for mark does not appear in the Wikipedia evidence; however, applicant misunderstands the purpose of this evidence.  For clarification, the above-referenced UPOV evidence establishes what varietal names the applied-for mark represents and the USDA and Wikipedia evidence establishes that the varietal names and applicant’s goods have and/or are commonly known to have the same meaning.

                       

Applicant’s assertion that the applied-for mark does not appear in the US National Germplasm System and the West database is also not persuasive because evidence may be provided from a variety of relevant sources, including those provided in the previous action.  The Court of Appeals for the Federal Circuit and Trademark Trial and Appeal Board have long recognized that the USPTO has limited resources for obtaining evidence when examining applications for registration; the practicalities of these limited resources are routinely taken into account when reviewing a trademark examining attorney’s action.  See In re Pacer Tech., 338 F.3d 1348, 1352, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003) (citing In re Loew’s Theatres, Inc., 769 F2d 764, 768, 226 USPQ 865, 868 (Fed. Cir. 1985)); In re Florists’ Transworld Delivery, Inc., 106 USPQ2d 1784, 1786 (TTAB 2013); TBMP §1208.

 

Finally, with regard to applicant’s recitation of the genericness test, please be aware that varietal or cultivar names are designations used to identify cultivated varieties or subspecies of live plants or agricultural seeds.  TMEP §1202.12.  They are generic and cannot be registered as trademarks because they are the common descriptive names of plants or seeds by which such varieties are known to the U.S. consumer.  Id.  Contrary to applicant’s argument, the examining attorney has provided sufficient evidence that the present mark is a varietal name for applicant’s goods, and therefore is generic.

 

Accordingly, applicant’s arguments are unpersuasive.  Because the applied-for mark is a varietal name for the applied-for goods, the trademark examining attorney maintains and CONTINUES the refusal for failure to function as a trademark under Trademark Act Sections 1, 2, and 45. 

 

AMENDMENT OF IDENTIFICATION OF GOODS REQURED

 

Because applicant’s filing did not include a response to the requirements to amend the identification of goods set forth in the previous action, the trademark examining attorney maintains and CONTINUES the requirement to amend all indefinite language in the identification of goods. 

 

The trademark examining attorney is hereby suspending action on the application for the reason set forth below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

SUSPENSION OF ACTION - FOREIGN REGISTRATION REQUIRED 

 

Applicant is required to provide a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin that will be in force at the time the United States registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §§1003.04(a)-(b), 1004.01, 1004.01(a).  Action on this application is suspended until the USPTO receives a copy of such foreign registration or proof of its renewal.  TMEP §§716.02(b), 1003.04(a)-(b), 1004.01(a).  If the foreign registration or renewal document is not in English, applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b).  Further, applicant should notify the trademark examining attorney in the event that the foreign application abandons or the foreign registration is not renewed.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

ADVISORY – RESPONSE GUIDELINES

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

/Rhoda Nkojo/

Examining Attorney

Law Office 117

(571)272-8468

Rhoda.Nkojo@USPTO.gov

 

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 Trademark Electronic Application System (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 2/26/2018 FOR U.S. APPLICATION SERIAL NO.87441195

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, 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)  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

 

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.