| To: | Dr. Earth, Inc. (sandy@sandylipkin.com) |
| Subject: | U.S. Trademark Application Serial No. 88210536 - TOP DRESS - 874-130 |
| Sent: | March 18, 2020 11:25:26 AM |
| Sent As: | ecom113@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88210536
Mark: TOP DRESS
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Correspondence Address:
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Applicant: Dr. Earth, Inc.
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Reference/Docket No. 874-130
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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: March 18, 2020
The statement of use 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.
ISSUES TO BE ADDRESSED:
Section 2(e)(1) Refusal—Mark is Merely Descriptive as Applied to Goods
Registration is refused because the applied-for mark merely describes a feature or characteristic of the applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
As discussed in the Office action of March 4, 2019 and supported by the evidence attached thereto, “top dressing” is “an application of manure or fertilizer to the surface layer of soil or a lawn,” which is an activity undertaken at a later stage in the planting or growing process, generally in order to ensure that plants have adequate nitrogen. (See the previously attached dictionary definition and article excerpts, and the attached page from lawn-care-academy.com). Additional evidence attached to that Office action showed common third-party use of TOP DRESS and TOPDRESS in reference to goods used for topdress applications.
In the Office action of March 4, 2019, a request for additional information was issued, pertaining to the applicant’s intended use of the mark in connection with the goods. In response to the requirement, the applicant amended the identification of goods and stated that the goods would not be suitable for “top dressing” but rather are for use in planting seeds and other growing plants.
However, based on further review of the application, statement of use, and evidence, it appears that the applicant’s goods are in fact intended for use in topdressing applications. For example, the attached webpage from armstronggarden.com shows the applicant’s “Top Dress” goods for sale with a product description referencing the technique of “top-dressing,” in the nature of “adding a thin layer of soil over your lawn.” In addition, the product details on the page indicate that the goods are ideal for “soil cover, topdressing.” As the goods are indicated as being for use in topdressing, TOP DRESS describes a key feature or purpose of the goods. Accordingly, the proposed mark is merely descriptive, and registration of the mark is refused under Trademark Act Section 2(e)(1).
Although registration of the mark has been refused, the applicant may present arguments against the refusal. If the applicant does respond to the refusal, the applicant must also respond to the following:
Domicile Address Required
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as a juristic entity and specifies applicant’s domicile as post office box. In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
To provide documentation supporting applicant’s domicile. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.
To provide applicant’s domicile street address. After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page. Information provided in the TEAS response form will be publicly viewable.
If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address. In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:
(1) First submit a TEAS Change Address or Representation (CAR) form. Open the form, enter the serial number, click “Continue,” and
(a) Use the radio buttons to select “Attorney” for the role of the person submitting the form;
(b) Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”
(c) On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;
(d) On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox.
(2) Then submit a TEAS response form to indicate the domicile address has been changed. Open the form and
(a) Answer “yes” to wizard question #3 and click “Continue;”
(b) Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form.
How to respond. Click to file a response to this nonfinal Office action.
/Kimberly Frye/
Examining Attorney
Law Office 113
(571) 272-9430
kimberly.frye@uspto.gov
RESPONSE GUIDANCE
