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:  June 12, 2020

 

 

INTRODUCTION

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is in response to applicant’s communication filed on May 1, 2020.

 

In a previous Office action(s) dated November 1, 2019, the trademark examining attorney refused registration of the applied-for mark for failure to function for being a varietal name.

 

While applicant’s response includes arguments and evidence countering the refusal, it is not sufficient to overcome the refusal.

 

After careful consideration of the recent response and the rest of the file, the trademark examining attorney maintains and now makes FINAL the refusal(s) below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

FINAL, PARTIAL Varietal Refusal

 

THIS REQUIREMENT APPLIES TO THE CLASS HEREIN ONLY

Registration is refused for the identified Class 31 goods still, 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 re-attached varietal evidence from http://www.upov.int/pluto/en/, www.app.ams.usda.gov and http://npgsweb.ars-grin.gov/gringlobal/search.aspx? that shows that GENESIS is the varietal name for Lucerne, apple tree, Podsolnechnik, Gypsophila, perennial ryegrass, sunflower, Pomodoro, Erba Medica, Mais, Deutsches Weidelgras, Winterraps, alfalfa, barley, cabbage, common wheat, field corn, Kentucky bluegrass, onion, soybean, sweet corn, tall fescue, tomato, triticale and 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) ); 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).

Even if the varietal name was originally arbitrary, it "describe[s] to the public a [plant] of a particular sort, not a [plant] from a particular [source]."  See TMEP §1202.12; Dixie Rose Nursery v. Coe, 131 F.2d 446, 447, 55 USPQ 315, 316 (D.C. Cir. 1942); see, e.g., In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1761-62 (Fed. Cir. 2006), aff’g In re KRB Seed Co., LLC, 76 USPQ2d 1156 (TTAB 2005) (The Court affirmed the Board’s holding that REBEL is the generic designation for a variety of grass seed.  The Board had held that the longstanding USPTO policy of treating varietal names as generic terms is valid and in accord with the Plant Variety Protection Act (7 U.S.C. §2422) (PVPA), the International Convention for the Protection of New Varieties of Plants (UPOV), and with case law since 1942.  The court rejected applicant’s argument that the provision in §14(3) of the Trademark Act that a “registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or services” supported registrability, stating that §14(3) was inapplicable because REBEL is not a registered mark.).  Hence, even though GENESIS was originally arbitrary, it has become a varietal name for certain varieties.

Applicant argued that the USDA’s website shows that varietal names listed therein may not have been released in the U.S.  While that may be true, the reverse also may be true.  Either way, the varietal name is protected as an intellectual property right of the breeder, and cannot be used as a source indicator through a mark registration from the Office.  See TMEP §1202.12.  Please see attached Internet evidence from http://www.upov.int/about/en/faq.html.                                                                                                                

Applicant also claimed that barley is not a row crop, but its evidence states that it “also” can be a cover crop (“Barley is also used as a cover crop…” Exhibit B to the recent Response), without precluding the possibility that it is a row crop.  In fact, as shown in the Internet evidence from http://barley.idaho.gov/pdf/spring_barley_production_guide.pdf (not attached due to technical difficulties), barley can be a row crop.  Material obtained from the Internet is generally accepted as competent evidence.  See In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (accepting Internet evidence to show genericness); TBMP §1208.03; TMEP §710.01(b).  The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping.  See In re Nieves & Nieves LLC, 113 USPQ2d at 1642 (taking judicial notice of the following two official government publications:  (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States:  2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation:  America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf).  Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.

Further, the corn and soybean seeds named in the proposed identification are, in fact, for row crops, as shown in the attached Internet evidence from http://en.wikipedia.org/wiki/Row_crop. 

Even if the mark identifies only the prominent portion of a varietal name, it must be refused.  See §TMEP 1202.12; In re Delta & Pine Land Co., 26 USPQ2d 1157 (TTAB 1993) (affirming the refusal to register DELTAPINE, which was a portion of the varietal names Deltapine 50, Deltapine 20, Deltapine 105 and Deltapine 506).  Hence, the varietal names listed on the listings attached that comprise of GENESIS with a less prominent word, like ND GENESIS, must be refused as well.

In addition to or in the alternative to submitting evidence and arguments in support of registration, applicant may render the refusal moot by (1) deleting the Class 31 identification (“Genetically-modified agricultural seeds for planting row crops, namely corn and soybean seeds”), or (2) amending the Class 31 identification to exclude the goods for which the mark, in whole or in part, comprises varietal names (“Genetically-modified agricultural seeds for planting row crops, excluding Lucerne, apple tree, Podsolnechnik, Gypsophila, perennial ryegrass, sunflower, Pomodoro, Erba Medica, Mais, Deutsches Weidelgras, Winterraps, alfalfa, cabbage, common wheat, field corn, Kentucky bluegrass, onion, soybean, sweet corn, tall fescue, tomato, triticale and watermelon” [any of the excluded varietals that are not row crops can be omitted].).

 

Response Guidelines for Final Actions

 

If applicant does not timely respond within six months of the issue date of this final Office action, Class 31 to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for Class 1 only. 

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

If applicant wants to delete its Class 31 goods or make the suggested Class 31 identification changes, applicant is encouraged to email or telephone the assigned trademark examining attorney to resolve the issue(s) raised in this Office action by examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

Alternatively, applicant may expedite prosecution of this application by filing its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Tina H. Mai/

Trademark Examining Attorney

Law Office 117

571-272-4110

tina.mai@uspto.gov (for informal communications)

 

 

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 June 12, 2020 for

U.S. Trademark Application Serial No. 88434477

 

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. 

 

 

/Tina H. Mai/

Trademark Examining Attorney

Law Office 117

571-272-4110

tina.mai@uspto.gov (for informal communications)

 

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 June 12, 2020, 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.”