To: | Alexandria Real Estate Equities, Inc. (trademarks@cooley.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88118275 - AGRIFOODTECH - 014616-TEMP3 |
Sent: | 12/28/2018 8:48:19 PM |
Sent As: | ECOM121@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88118275
MARK: AGRIFOODTECH
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Alexandria Real Estate Equities, 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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 12/28/2018
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).
Section 2(e)(1) Refusal—Mark is Merely Descriptive
Applicant’s mark is:
The attached evidence from the Frontiers Media and AgFunder News websites shows that “AGRIFOOD TECH” refers to the “small but growing segment of the startup and venture capital universe that’s aiming to improve or disrupt the global food and agriculture industry”. The attached evidence from the Medium website explains that “AGRIFOOD TECH” refers to “the collective of startups with the mission to disrupt the global food and agriculture industry, with technology obviously playing a key role”. As applicant provides start-up support for businesses, it is evident that “AGRIFOODTECH” in applicant’s mark may refer to the fields these start-up businesses are in. This wording is also descriptive of applicant’s Class 36 services as applicant may provide “business incubator services” to those in the AgriFood Tech industry. The attached evidence from the Yield Lab website actually shows that some incubators deal with AgriFood Tech companies in particular. Lastly, applicant may engage in real estate development for buildings used by AgriFood Tech companies/startups. As “AGRIFOODTECH” is descriptive of a particular field in the business world, it is evident that this wording is descriptive of a feature of applicant’s services in that the services may be targeted towards those in this particular industry.
It should be noted that applicant’s lack of a space between “FOOD” and “TECH” does not detract from the need for this refusal. Generally, if the individual components of a mark retain their descriptive meaning in relation to the services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or non-descriptive meaning in relation to the services. Specifically, the terms refer to agriculture, food and technology, and are typically combined to name a business sector that deals with these issues. This is shown in the attached evidence from the AgFunder News website.
In light of the foregoing, it is evident that applicant’s mark is merely descriptive in relation to their services. Applicant may provide arguments in support of registration, however, applicant must still respond to the requirements set forth below.
Supplemental Register Advisory
Benefits of the Supplemental Register
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Particular Wording in the Identification of Services is Indefinite
· Applicant must clarify the nature of their publicity services. If these are publicity agency or bureau services, this may be specified. If these are publicity and sales promotion services, this may be clarified. If the publicity is related to advertising, this may be clarified.
· The entry “promoting collaboration within the scientific, research and technology communities to advance learning and innovation within those communities” is indefinite. Applicant must clarify the nature of the “technology communities” and must specify the field in which applicant plans to promote collaboration within.
Applicant may substitute the following wording, if accurate:
Class 35: Business administration and management; business consultation services; business management consulting; business incubator services, namely, business marketing, business management, and business development services in the form of start-up support for businesses of others; business networking services; business communications services, namely, public relations, advertising, marketing and publicity agency services; promoting collaboration within the scientific, research and scientific technology communities to advance learning and innovation within those communities, specifically in the field of {specify field, e.g. autism, healthcare, etc.}; rental and leasing of office machinery and equipment
Class 36: Real estate management; real estate services, namely, real estate brokerage, acquisition, rental, leasing, and management services; investment management services; property management services, namely, real estate management; financial services, namely, financial consultation, financial analysis, financial planning, financial management, financing services, providing working capital, namely, debt and equity capital, tangible and intangible asset financing, and financial portfolio management; business incubator services, namely, providing debt and equity financing to emerging and start-up companies
Class 37: Real estate development; building construction, maintenance and repair; real estate property maintenance services
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. See TMEP §1402.04.
Response to Office Action
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 $125 per 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 or e-mail without incurring this additional fee.
Rosen, Amanda
/Amanda Rosen/
Examining Attorney
Law Office 121
571-270-5984
Amanda.Rosen@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.