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.  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: 3/1/2019

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE RECORDS – NO CONFLICTING MARKS NOTED

 

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).

 

DISCLAIMER OF DESCRIPTIVE WORDING REQUIRED

 

Applicant must provide a disclaimer of unregistrable wording in the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “ENVIRONMENTAL” in the mark because it is not inherently distinctive. This unregistrable term at best is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

“ENVIRONMENTAL” is defined as “relating to the natural world and the impact of human activity on its condition” and “aiming or designed to promote the protection of the natural world.” Oxford Living Dictionaries, (2019). It is likely the applicant’s goods and services are intended or suitable for use in environmental protection or utilize environmentally sound practices. Accordingly, the word “ENVIRONMENTAL” in the proposed mark is merely descriptive for a feature of the goods and services and must be disclaimed apart from the mark as shown.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “ENVIRONMENTAL” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

The identification of goods and is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In addition some or all of the goods and services have been misclassified. The applicant must amend the application to properly classify the goods and services and either limit the application to goods falling in six classes or add classes to the application. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 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 following specific issues must resolved:

 

International Class 1:

 

The term “lime” is indefinite. The applicant must specify the type of lime, e.g., “agricultural lime”. Note that some “lime” falls in classes other than International Class 1. For example, “non-agricultural lime for use in construction” falls in International Class 19, therefore, the applicant must also properly classify the goods.

 

The wording “wood fibers” is indefinite. The applicant must specify the use of the goods in order to determine proper classification. Note that “wood fiber for use as mulch” would fall in International Class 31.

                                                                                                                                

International Class 35:

 

The wording “business management, namely, management and maintenance of plants and plants for processing and storage of organic wastes and organic waste products” is indefinite. The applicant must clarify the subject matter of the services and specify that the services are provided “for others”. In addition, maintenance is an International Class 37 service, rather than a business service.

 

International Class 37:

 

The wording “land reclamation and amendment” is indefinite. The applicant must specify the form of the “amendment” services in order to determine proper classification.

 

The wording “collection of food waste and organic waste for purposes of converting them to compost, soil amendment, soil conditioners, planting and potting soil, topsoil, planter mix, fertilizer and mulch” is indefinite and has been misclassified because “waste collection” is a transportation service. Accordingly, the applicant must clarify the form of the services and reclassify them in International Class 39.

 

International Class 39:

 

Acceptable as written.

 

International Class 40:

 

The wording “organic waste disposal services” is indefinite because it could refer to a removal or transport service in International Class 39, cleaning services in International Class 37 or destruction services in International Class 40. Accordingly, the applicant must clarify the form of the “disposal”.

 

The wording “organic waste management services” is indefinite. The applicant must specify the form of the services in order to determine proper classification.

 

The wording “waste management contracting services” is indefinite. The applicant must specify the form of the services in order to determine proper classification.

 

The wording “composting services” is indefinite because it is unclear whether the applicant is creating compost or spreading compost (an International Class 44 service). Accordingly, the applicant must clarify the nature of the services in order to determine proper classification.

 

International Class 42:

 

The applicant must clarify the form and subject matter of the “consulting, development and management of ASM (Agricultural Source Management) plans, NASM (Non-Agricultural Source Material) plans, and regulatory plans” in order to determine proper classification. Note that regulatory compliance services are classified in International Class 45 and business management services are classified in International Class 35. Consultation in technical areas, such as processing or treatment would be classified by the type of activity that is the subject matter of the consultation.

 

The applicant must clarify the form of the “consultation and planning in the field of management of soil health” in order to determine proper classification.

 

The applicant must clarify the form of the “planning” in the wording “consultation and planning in the field of land reclamation” in order to determine proper classification. In addition, the consultation in the field of land reclamation services have been misclassified. The proper class is International Class 37.

 

Applicant may adopt the following identification, if accurate: 

 

“compost, fertilizers, soil amendments, soil conditioners for agricultural, domestic and horticultural use, planting and potting soil, horticultural potting soil, agricultural lime,” in International Class 1;

 

“wood fiber for use as mulch,” in International Class 31.

 

“business management, namely, management of waste treatment plants and plants for processing and storage of organic wastes and organic waste products for others; business management, namely, management of agricultural and non-agricultural waste management programs for others,” in International Class 35;

 

“waste management plant maintenance services, namely, maintenance of equipment used in the storage of organic wastes and organic waste products; land reclamation; land amendment, namely, hazardous waste clean-up services; dredging; consultation in the field of land reclamation,” in International Class 37;

 

“transportation services, namely, collection of food waste and organic waste to be converted into compost, soil amendment, soil conditioners, planting and potting soil, topsoil, planter mix, fertilizer and mulch; collection, transportation and storage of household and yard waste, and of organic waste from industrial, commercial and institutional sources; transportation and storage of organic waste removed from treated wastewater and manures,”  in International Class 39;

 

“waste water treatment services; organic waste disposal services, namely, destruction of organic waste; organic waste management services, namely, organic waste treatment; waste sorting services; waste management contracting services, namely, waste treatment contractor services; treatment and processing of solid organic waste removed from wastewater; treatment and processing of organic food waste; composting services, namely, production of compost using organic waste; material treatment services, namely, aerobic decomposition and decaying of leaf and yard waste and anaerobic digestion of organic waste; consultation in the field of waste management; consulting in the field of agricultural and non-agricultural waste treatment,” in International Class 40;

 

“development of techniques used in agricultural and non-agricultural waste treatment for others; consultation and planning in the field of management of soil health, namely, consultation in the field of soil testing for purposes of managing soil health, and development of soil sampling and testing plans for others; planning in the field of land reclamation, namely, development environmental engineering plans for use in land reclamation projects,” in International Class 42;

 

“regulatory compliance services, namely, consultation regarding regulatory compliance plans in the field of agricultural and non-agricultural waste management,” in International Class 45.

 

Additions Not Allowed: Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Trademark ID Manual: 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.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and 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 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that may be classified in at least seven classes; however, applicant submitted fees sufficient for only six 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).

 

See 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.

 

APPLICATION FILED UNDER SECTIONS 1(b) and 44(d)

 

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, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must 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.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  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).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); 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.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

QUESTIONS REGARDING THE INSTANT OFFICE ACTION

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.

 

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.  

 

 

 

/Martha L. Fromm/

Trademark Examining Attorney

U.S. Patent and Trademark Office - Law Office 106

571-272-9320

Martha.Fromm@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 3/1/2019 FOR U.S. APPLICATION SERIAL NO. 88200971

 

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 3/1/2019 (or sooner if specified in the Office action).  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.  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 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.