To: | Desert Sun Marketing Company, Inc. (ken@motosalaslaw.com) |
Subject: | U.S. Trademark Application Serial No. 88452400 - OASIS - N/A |
Sent: | February 24, 2020 01:42:28 PM |
Sent As: | ecom109@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 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88452400
Mark: OASIS
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Correspondence Address:
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Applicant: Desert Sun Marketing Company, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: February 24, 2020
This Office action is in response to applicant’s communication filed on January 16, 2020. Applicant amended the application to Section 1(b) Intent to Use. Therefore, the specimen refusal is withdrawn. Applicant’s arguments regarding the Section 2(d) Refusal Based on Likelihood of Confusion and the Varietal Refusal have been considered and found unpersuasive for the reasons set forth below. Accordingly, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4983502. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). Also, the Refusal under Sections 1, 2 and 45 because the applied-for mark is a varietal name for the goods is now made FINAL. See Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §1202.12; 37 C.F.R. §2.63(b).
Section 2(d) Refusal Based on Likelihood of Confusion - FINAL
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
Therefore, the marks are confusingly similar.
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Applicant’s goods are: Grass seed
And/or
Registrant’s goods are: Grass seed
Applicant and registrant provide identical goods. Therefore, it is presumed that the channels of trade and classes of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Where the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
This refusal is FINAL.
Applicant should note the following additional ground for refusal.
REFUSAL – APPLIED-FOR MARK IS A VARIETAL NAME - FINAL
Registration is refused 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 the evidence attached to the July 17, 2019 Office Action from S. Department of Agriculture varietal database, U.S. National Plant Germplasm System database and U.S. PLUTO Plant Variety Database that show that OASIS is the varietal name for blue grass and fescue.
Applicant stated that the word “OASIS” has not been used by applicant nor anyone else as a varietal or cultivar name. However, the attached evidence from the U.S. national databases references above and third-party websites and articles shows that others use the name as a varietal or cultivar name. For example:
--University of Maryland Center of Environmental Science information about Proa Protensis L: “Proven and promising Kentucky bluegrass cultivars for Maryland include Aries, Barvette HGT, Beyond, Bluebank, Blue Coat, Blue Note, Cabernet, Diva, Endurance, Everglade, Full Back, Granite, Hampton, Impct, Keenland, Legend, Midnight, Noble, NuChicago, NuGlade, Oasis, Skye, Solar Eclipse, Sudden Impact, and Touche.” (Emphasis added) See the attached screenshot from http://www.umces.edu/sites/default/files/Kentucky-bluegrass-summary.pdf, retrieved February 23, 2020.
--Pennington Smart Seed Kentucky Bluegrass Blend is describes as “has the following seed mixture: 48.8% Ridgeline Kentucky Bluegrass 29.3% Wild Horse Kentucky Bluegrass 14.5% Oasis Kentucky Bluegrass 9.6% Mallard Kentucky Bluegrass”. (Emphasis added0. See the attached screenshot from http://www.domyown.com/pennington-smart-seed-kentucky-bluegrass-blend-p-8822.html, retrieved February 24, 2020.
--The NC State Extension published a study “2016 Top Performing Tall Fescue and Kentucky Bluegrass Cultivars for North Carolina”, listing Oasis as a Kentucky Bluegrass cultivar. See the attached screenshot from http://content.ces.ncsu.edu/2016-top-performing-tall-fescue-and-kentucky-bluegrass-cultivars, retrieved February 24, 2020.
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).
Applicant argues that it would be inconsistent to allow DESERT OASIS but not allow OASIS. However, each application is reviewed and refusals issued based on the evidence available at the time of review. As such, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
The evidence available now shows the word “OASIS” is a varietal name for grass seed and as such is generic and cannot be registered as a trademark. Accordingly, registration is refused under Sections 1, 2 and 45 of the Trademark Act.
This refusal is FINAL.
Proper Response to Final Action
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond 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).
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).
/Kathleen Lorenzo/
Kathleen Lorenzo
Trademark Examining Attorney
Law Office 109
Kathleen.Lorenzo@uspto.gov
571-272-5883
RESPONSE GUIDANCE