To: | Growcentia, Inc. (steve@fourreasonslegal.com) |
Subject: | U.S. Trademark Application Serial No. 88188007 - YETI - N/A |
Sent: | July 11, 2019 05:06:45 PM |
Sent As: | ecom110@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88188007
Mark: YETI
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Correspondence Address:
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Applicant: Growcentia, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 11, 2019
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.
How to respond. Click to file a response to this nonfinal Office action
REFUSAL – APPLIED-FOR MARK IS A VARIETAL NAME
Registration is refused because the applied-for mark is a varietal name for the identified goods and, thus, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §1202.12. See evidence below from the following varietal searches that shows that LCD YETI is the varietal name for seeds and YETI is a varietal name for some of the following types of plants: Beet Fodder/Sugar, Field Peas, Maize, Field Bean, Pea, Rape ((Brassica napus, variety napus), also called rapeseed or colza, plant of the mustard family (Brassicaceae)), Common Wheat, Pea, and Pepper.
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. Moreover, a consumer “has to have some common descriptive name he can use to indicate that he wants one [particular] variety of apple tree, rose, or whatever, as opposed to another, and it is the varietal name of the strain which naturally and commonly serves this purpose.” In re Pennington Seed, Inc., 466 F.3d 1053, 1057, 80 USPQ2d 1758, 1761 (Fed. Cir. 2006) (quoting In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034, 1036 (TTAB 1979)); see In re Delta & Pine Land Co., 26 USPQ2d 1157, 1159 n.4 (TTAB 1993).
In response to applicant’s inquiry. The applicant responded with the following response regarding the varietal inquiry. “Varietal Refusal Response: Applicant is not aware of instances where the mark sought for registration has been used as a varietal or cultivar name. Applicant is further unaware of any instances where the mark sought for registration has been used with the subject matter of a plant patent. The mark is used with one or more products subject to one or more non-plant utility patents, which Applicant asserts is not relevant to any analysis regarding plant varietals.” In accordance with the evidence provided below. It is clear from the evidence below that YETI has been used as a varietal or cultivar name. Applicant’s identifies “Live plants; plant seeds; agricultural seeds; seeds for sowing; seeds for planting; genes sold as an integral component of agricultural seed.
In light of the above discussion, applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
INFORMATION REQUIRED REGARDING APPLIED-FOR MARK
To permit proper examination of the applied-for mark, applicant must indicate the following:
(1) Applicant must specify the type of seeds and plants that are identified more broadly in the identification of goods; and
(2) In regard to whether YETI has ever been used or will be used in connection with a plant patent, utility patent, or certificate for plant-variety protection, it is the examiner’s understanding from applicant’s statement that applicant’s mark is used with one or more products subject to one or more non-plant utility patents
TMEP §1202.12; see 37 C.F.R. §2.61(b).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
TEAS RESPONSE GUIDELINES
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
/C. Dionne Clyburn/
C. Dionne Clyburn
Trademark Examining Attorney
Law Office 110
571-272-9358
dionne.clyburn@uspto.gov
RESPONSE GUIDANCE