To: | FLORATINE PRODUCTS GROUP, INC. (sfentress@veritaygroup.com) |
Subject: | U.S. Trademark Application Serial No. 88348355 - SOIL MECHANIX - 12559.00021 |
Sent: | September 27, 2019 07:43:28 PM |
Sent As: | ecom127@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 Attachment - 13 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88348355
Mark: SOIL MECHANIX
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Correspondence Address:
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Applicant: FLORATINE PRODUCTS GROUP, INC.
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Reference/Docket No. 12559.00021
Correspondence Email Address: |
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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: September 27, 2019
This Office action is supplemental to and supersedes the previous Office action issued on August 6, 2019 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: Generic refusal under Trademark Sections 23(c) and 45. See TMEP §§706, 711.02.
In a previous Office action dated August 23, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(e)(1) for a mark that was merely descriptive.
It is noted that there is an error in the Office action dated September 6, 2019. Under the heading “Summary of Issues Made Final that applicant must address”, the examining attorney inadvertently stated that the Section 2(e)(1) Refusal was for a “Likelihood of Confusion”. Instead, the wording “Merely Descriptive” should have been after the hyphen, such that the heading should have read “Section 2(e)(1) Refusal – Merely Descriptive”. The trademark examining attorney apologizes for any confusion that this error may have caused.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Generic Refusal
Applicant must respond to all issues raised in this Office action and the previous September 6, 2019 Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
In applicant’s request for reconsideration on September 9, 2019, the applicant wished to amend their application to the Supplemental Register.
GENERIC REFUSAL
“A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.” TMEP §1209.01(c)(i) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600 (TTAB 2014)). Determining whether a mark is generic requires a two-step inquiry:
(1) What is the genus of services at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of services?
In re Cordua Rests., Inc., 823 F.3d 594, 599, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530); TMEP §1209.01(c)(i).
Regarding the first part of the inquiry, the genus of the services may be defined by an applicant’s identification of services. See In re Cordua Rests., Inc., 823 F.3d at 602, 118 USPQ2d at 1636 (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 640, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)); see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363, 92 USPQ2d 1682, 1682, 1684 (Fed. Cir. 2009).
In this case, the application identifies the services as “Agricultural testing, namely, agricultural soil testing and soil nutrient analysis for golf courses and sport turf fields”, which adequately defines the genus at issue.
Regarding the second part of the inquiry, the relevant public is the purchasing or consuming public for the identified services. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d at 640, 19 USPQ2d at 1553). In this case, the relevant public comprises consumers in the outdoor athletic field business who purchase applicant’s services, because the scope of applicant’s agricultural testing services are limited to the class of consumers involving golf courses and turf fields.
The attached evidence from General Sport Surface, Humboldt and Norwich University, along with the previously attached evidence, shows that the wording “SOIL MECHANICS” in the applied-for mark means the branch of engineering involving the testing of soil, and thus the relevant public would understand this designation to refer primarily to that genus of services because upon building or maintaining golf courses and turf fields, the soil is evaluated and the mechanics and properties of the soil, are studied.
Accordingly, registration of the applied-for mark is hereby refused under Sections 23(c) and 45 of the Trademark Act.
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.
How to respond. Click to file a response to this nonfinal Office action
/Josh Galante/
Joshua M. Galante
Trademark Examining Attorney
Law Office 127
571-272-4310
Josh.Galante@uspto.gov
RESPONSE GUIDANCE