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

 

This Office action is in response to applicant’s communication filed on 16 September 2019.

 

Refusal – Varietal Name

For the reasons set forth below, the refusal is now made FINAL under Trademark Act Sections 1, 2, and 45 for failure to function as a trademark.  See 15 U.S.C. §§1051, 1052, 1127; 37 C.F.R. §2.63(b).

 

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).

 

The applicant seeks to register GOLDRUSH for apples and apple tree seeds. The evidence of record shows the proposed mark is a varietal name for apples, apple trees and seeds and, thus, does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.

 

The background of the invention section of the applicant’s patent provided in the response states “The present new cultivar, ‘Co-op 38’, also known as ‘Goldrush’ was produced from crossing ‘Golden Delicious’ as the seed parent…”. The patent is identifying the apple tree by its cultivar name, Goldrush, so it is unclear how applicant states the term has never been used in connection with a plant patent.

 

The applicant calls it a cultivar in information provided by its PRI disease resistant apple breeding program.

 

“'GoldRush' is the tenth apple cultivar developed by the cooperative breeding program of the Indiana, Illinois, and New Jersey Agricultural Experiment Stations (Crosby et al., 1992).” http://www.hort.purdue.edu/newcrop/pri/coop38-3.html

 

“Cultivars (varieties) named by PRI include Prima (1970), Priscilla (1972), Sir Prize (1975), Jonafree (1979), Redfree (1981), Dayton (1988), Williams Pride (1988), Enterprise (1993), GoldRush, (1993)” http://www.hort.purdue.edu/newcrop/pri/

 

http://www.hort.purdue.edu/newcrop/pri/cultivars.html

 

The National Gardening Association Plant database, attached with the first Office action, showed GOLDRUSH is the generic name for a specific type of apple. The U.S. National Plant Germaplasm System, attached with the first Office action, showed GOLDRUSH is the cultivar name for a specific type of apple. Also attached with the first Office action, were websites from different nurseries that sell Goldrush variety apple trees and gardening websites that describe the attributes of the Goldrush variety apple. Attached are additional websites that show “GOLDRUSH” is the name of a variety of apple.

http://www.fedcoseeds.com/trees/goldrush-apple-143

http://davesgarden.com/guides/pf/go/124491/#b

http://www.kauffmansfruitfarm.com/Fresh-Juicy-Goldrush-Apples-Homegrown/item/GH2BOX

http://www.plantmanagementnetwork.org/pub/php/research/2010/apple/

http://www.latimes.com/food/la-fow-market16-2009oct21-story.html

http://www.hgtv.com/outdoors/flowers-and-plants/trees-and-shrubs/low-maintenance-apple-trees

http://shop.cumminsnursery.com/shop/apple-trees/goldrush

http://www.penseberryfarm.com/GoldRush-Apple-p/gdra.htm

http://www.burntridgenursery.com/GOLDRUSH-APPLE-Malus-domestica/productinfo/NSAPGRUSH/

http://onegreenworld.com/product/goldrush-m-26-2/

http://www.agorafarms.com/our-products/dried-fruitnuts-grains/apples/apples/

http://www.burpee.com/fruit/apple-trees/apple-gold-rush-prod002649.html

http://ourharvest.com/products/produce/gold-rush-apples/

http://www.beilkefamilyfarm.com/blog/2014/10/gold-rush-and-granny-smith-are-ready

http://www.wilsonsorchard.com/apple_varieties/gold_rush/

 

Applicant argues that it adopted the proposed mark “GOLDRUSH” as its trademark for its apple tree. TMEP §1202.12 states, “Problems arise when trademark registration is sought for varietal names, when arbitrary varietal names are thought of as being trademarks by the public, and when terms intended as trademarks by plant breeders become generic through public use.” The evidence of record shows that proposed mark GOLDRUSH has become generic for apples and apple trees through widespread public use.

 

 

/Angela M Micheli/

Trademark Examining Attorney, Law Office 101

571.272.9196

571.273.9196 (fax)

angela.micheli@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 29, 2019 for

U.S. Trademark Application Serial No. 88312327

 

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. 

 

 

/Angela M Micheli/

Trademark Examining Attorney, Law Office 101

571.272.9196

571.273.9196 (fax)

angela.micheli@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 29, 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.”