Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  July 15, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

The applicant must address the following issues:

• Identification of goods requirement
• Translation requirement
• Request for Information requirement

 

PROCEDURAL ISSUE(S)

 

Identification of Goods and/or Services Requirement

 

International Class 001: Applicant has identified the goods and/or services as “Chemicals used in agriculture, horticulture and forestry, especially plant fortifying preparations; chemical or biological preparations for stress management in plants, plant growth regulating preparations, chemical preparations for the treatment of seeds, genes of seeds for agricultural production”

 

International Class 005: Applicant has identified the goods and/or services as “Preparations for destroying and combating vermin; insecticides, fungicides, herbicides, pesticides”

The wording “chemicals used in agriculture, horticulture and forestry, especially plant fortifying preparations” is overly-broad and indefinite.  Specifically, the wording “especially” is non-limiting and so this wording could still encompass “fungicides, herbicides, insecticides and parasiticides” in Class 5.  The Identification may either be amended to exclude this wording or to amend the “especially” to limiting language, e.g., “namely”.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

The wording “chemical or biological preparations for stress management in plants, plant growth regulating preparations, chemical preparations for the treatment of seeds, genes of seeds for agricultural production, surfactants for use in industry” is overly-broad and indefinite and must be amended.  First the “stress management” preparations must be clarified, e.g., Chemical preparations for preventing pathogenic infections in plants, etc. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Second the “genes of seeds for agricultural production” is overly-broad and indefinite as this could encompass both the genes themselves in Class 1 and genetically modified seeds in Class 31.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03The wording “Biotechnologically-formed genes for use in the manufacture of agricultural seeds” is suggested, if accurate.

Applicant may adopt the following identification, if accurate. 

 

·       Class 001:  Chemicals used in agriculture, horticulture and forestry, [clarify the goods in Class 1, e.g., except fungicides, herbicides, insecticides and parasiticides], especially plant fortifying preparations; chemical or biological preparations for stress management in plants in the nature of [clarify goods, e.g., Chemical preparations for preventing pathogenic infections in plants, etc.]; plant growth regulating preparations; chemical preparations for the treatment of seeds;  genes of seeds for agricultural production in the nature of [clarify goods in Class 1, e.g., biotechnologically-formed genes for use in the manufacture of agricultural seeds]

·       Class 005:  Preparations for destroying and combating vermin; insecticides, fungicides, herbicides, pesticides  

·       Class 031:  Genetically-modified {specify type of seed e.g., agricultural, flower, plant, vegetable, etc.} seeds

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to add International Class 031.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Multiple Class Application Requirements

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only two class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

English Translation Requirement

 

Applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.32(a)(9); see TMEP §809.  In the present case, the wording “SYSTIVA” requires translation.

 

The following translation statement is suggested: 

 

• The English translation of “SYSTIVA” in the mark is “{specify translation}”. 

 

TMEP §809.03.

If this term has no meaning in a foreign language, applicant should provide the following statement: 

• The wording “SYSTIVA” has no meaning in a foreign language.” 

Id.

 

Request for Information Requirement

 

To permit proper examination of the applied-for mark, applicant must indicate the following:

 

(1)       Whether SYSTIVA has ever been used or will be used as a varietal or cultivar name; and

 

(2)       Whether SYSTIVA has ever been used or will be used in connection with a plant patent, utility patent, or certificate for plant-variety protection.

 

TMEP §1202.12; see 37 C.F.R. §2.61(b).

 

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).

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

RESPONSE GUIDELINES

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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  

 

 

/mvaghani/

Mayur Vaghani

Examining Attorney

Law Office 124

Phone: (571) 272-1615

Fax: (571) 273-9102

mayur.vaghani@uspto.gov

 

 

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 July 15, 2019 for

U.S. Trademark Application Serial No. 88474586

 

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. 

 

 

/mvaghani/

Mayur Vaghani

Examining Attorney

Law Office 124

Phone: (571) 272-1615

Fax: (571) 273-9102

mayur.vaghani@uspto.gov

 

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 July 15, 2019, 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.”