Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 31, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on October 7, 2019.

 

In a previous Office action dated April 5, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Sections 1, 2, and 45 due to the applied-for mark being a varietal covered by Applicant’s identification of goods.  In addition, applicant was required to satisfy the following requirement: provide information regarding the applied-for mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: Applicant has provided the requested information.  See TMEP §§713.02, 714.04. 

 

In addition, Applicant has provided evidence and arguments against the Trademark Act Sections 1, 2, and 45 refusal.

 

The trademark examining attorney has examined this evidence and these arugments and found them unpersuasive. As a result, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Trademark Act Sections 1, 2, and 45 Refusal—Applied for Mark is a Varietal Name

 

TRADEMARK ACT SECTIONS 1, 2, AND 45 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 previously attached evidence from the PLUTO Plant Variety Database, U.S. National Plant Germplasm System, and USDA Agricultural Marketing Service that shows that BARN BURNER is the varietal name for a variety of lettuce, Lactuca Sativa. Applicant has identified their goods in the application as seeds for planting, which presumably includes all seeds of the type described including this particular variety of lettuce. The newly attached evidence from the Alabama Agricultural Experiment Station and the University of California Division of Agriculture and Natural Resources establishes that this variety is one of the more commonly planted varieties in a variety of locations.

 

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).

 

 

APPLICANT’S ARGUMENT IN RESPONSE

 

In response, Applicant argues that (1) the applied-for mark is a categorical name, not a varietal name, (2) the applied-for mark is used on a variety of products outside of the agricultural field, (3) the applied-for mark is not a varietal, and (4) the applied-for mark would not be understood as a varietal.

 

Applicant has not provided any evidence in support of the contention that the applied-for mark is a categorical name rather than a varietal name beyond stating broadly that categorical names rather than varietal names are used to market various plants and that thousands of such varietal names exist.

 

In support of Applicant’s second statement, Applicant has attached website excerpts of various wines and beers using the applied-for mark.  However, Applicant has not applied for either wine or beer, rather Applicant has identified their goods as “seeds for planting”, which would not include either of these goods.

 

In support of Applicant’s third contention, Applicant states that “the product description does not include lettuce” and that Applicant is not and will not use the mark as a varietal name, however, the identification of goods is “seeds for planting” which does not contain any restriction against lettuce and the previously attached evidence establishes that the applied-for mark is a varietal of lettuce.

 

In support of Applicant’s fourth contention, Applicant cites In re Diamond Hill Farms, however it is unclear why Applicant has cited this particular case in which the applied-for mark was denied as it failed to function as used on the specimen of record and did not involve a particular varietal as in the instant case. 32 U.S.P.Q.2d 1383 (TTAB 1994). The instant refusal is under Trademark Act Sections 1, 2, and 45 as such what is at issue is not whether the applied-for mark functions on the specimen of record (as the applied-for mark was filed under Trademark Act Section 1(b)), but rather whether the applied-for mark is the generic term for a recognized variety of plant. See Pennington Seed, 80 USPQ2d at 1761-62 (upholding the USPTO’s long-standing precedent and policy of treating varietal names as generic, and affirming refusal to register REBEL for grass seed because it is the varietal name for the grass seed as evidenced by its designation as the varietal name in applicant’s plant variety protection certificate); Dixie Rose Nursery, 55 USPQ at 316 (holding TEXAS CENTENNIAL, although originally arbitrary, has become the varietal name for a type of rose; In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034, 1035 (TTAB 1979) (affirming the refusal to register COMMANDER YORK for apple trees because it is the varietal name for the trees as evidenced by use in applicant’s catalogue); In re Farmer Seed & Nursery Co., 137 USPQ 231, 231-32 (TTAB 1963) (upholding the refusal to register CHIEF BEMIDJI as a trademark because it is the varietal name for a strawberry plant and noting that large expenditures of money does not elevate the term to a trademark;  In re Cohn Bodger & Sons Co., 122 USPQ 345, 346 (TTAB 1959) (holding BLUE LUSTRE merely a varietal name for petunia seeds as evidenced by applicant’s catalogs).

 

As Applicant’s arguments and evidence used in support of them have been examined and found unpersuasive, the refusal to register under Trademark Act Sections 1, 2, and 45 must be CONTINUED AND MADE FINAL.

 

RESPONSE GUIDELINES

 

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. 

 

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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

Riso, Mark

/Mark Riso/

Trademark Examining Attorney

Law Office 108

(571)272-0167

Mark.Riso@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 31, 2019 for

U.S. Trademark Application Serial No. 88264022

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Riso, Mark

/Mark Riso/

Trademark Examining Attorney

Law Office 108

(571)272-0167

Mark.Riso@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 31, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”