To: | M.S. Technologies, L.L.C. (akerndt@nyemaster.com) |
Subject: | U.S. Trademark Application Serial No. 88434477 - GENESIS - N/A |
Sent: | November 01, 2019 07:21:02 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88434477
Mark: GENESIS
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Correspondence Address:
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Applicant: M.S. Technologies, L.L.C.
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Reference/Docket No. N/A
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: November 01, 2019
This letter is in response to applicant’s communication dated 10/01/2019. This letter is also intended to inform that the varietal refusal should have been made as to the goods in International Class 31 only and that said refusal does not apply to the goods listed in International Class 1. Therefore, please note below.
REFUSAL PERTAINING TO INTERNATIONAL CLASS 31 ONLY – APPLIED-FOR MARK IS A VARIETAL NAME
Registration was refused because the applied-for mark GENESIS 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 Internet that shows that GENESIS is the varietal name for agricultural seeds featuring alfalfa, barley cabbage, common wheat, filed corn, onion, soybean, sweet corn, tomato, watermelon.
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).
Please note, however that this refusal is hereby modified from the initial refusal and it is applicable as to the goods listed in International Class 31 only.
In its response dated 10/01/2019 the applicant submitted the following: (1) Applicant has not used, nor does it intend to use GENESIS as a varietal or cultivar name (2) Applicant has not used, nor does it intend to use GENESIS in connection with a plant patent, utility patent, or certificate for plant-variety protection. With respect to the information provided by the applicant please note the following. The applicant’s intent or own use doesn’t really matter if others use the mark as a cultivar name.
Therefore, for the reasons listed above registration is refused under Trademark Act Sections 1, 2, and 45 as to International Class 31 only.
If applicant does not respond to this Office action within the six-month period for response, International Class 031 will be deleted from the application. The application will then proceed with International Class 001 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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
/Blandu, Florentina/
Examining Attorney
U.S. Patent & Trademark Office
L.O.117
Florentina.Blandu@uspto.gov
Tel 571-272-9128
Fax 571-273-9128
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