To: | Amyris, Inc. (tm@redfieldip.com) |
Subject: | U.S. Trademark Application Serial No. 88326666 - SCIENCE POWERED BY NATURE PURECANE - N/A |
Sent: | October 25, 2019 04:17:42 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88326666
Mark: SCIENCE POWERED BY NATURE PURECANE
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Correspondence Address: |
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Applicant: Amyris, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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PRIORITY ACTION
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: October 25, 2019
Applicant must address issues shown below. On October 25, 2019, the examining
attorney and
Christine B. Redfield discussed the issues below. This Office action supplements and replaces the Action sent May 3, 2019.
Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
Applicant must disclaim the wording “PURE CANE” because it merely describes applicant’s goods and/or services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); 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)); TMEP §§1213, 1213.03(a). A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.
As the attached dictionary evidence shows the word “PURE” is defined as “unmixed with any other matter” while “cane” identifies the sugar cane plant. In combination the words “pure” and “cane” identify sweeteners that consist entirely of sugar cane derived matter. Please see the attached evidence from Monin, Dixie Crystals, Sugarcane Island, and Domino Sugar for examples of third parties using “pure cane” as a generic identifier for the composition of their sweeteners.
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “PURE CANE” apart from the mark as shown.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b). For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
IDENTIFICATION AMENDMENT REQUIRED TO AVOID DECEPTIVE REFUSAL
This feature or characteristic is considered desirable for applicant’s goods because it is a natural sweetener which has different ascribed health benefits than artificial sweeteners. Please see the attached evidence from the Mayo Clinic. However, if some or all of the goods and/or services do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods and/or services. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
To avoid such refusal, applicant may amend the identification to specify that the goods and/or services possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Therefore, applicant may amend the identification to the following, if accurate: Zero-calorie sweetener derived through fermentation of cane syrup and consisting entirely of ingredients derived from cane sugar plants.
How to respond. Click to file a response to this nonfinal Office action
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/David A. Brookshire/
Examining Attorney
Law Office 114
(571) 272-7991
David.Brookshire@uspto.gov
RESPONSE GUIDANCE