To: | DLF Pickseed USA, Inc. (mlivermore@eugenelaw.com) |
Subject: | U.S. Trademark Application Serial No. 88476215 - X·PAND - N/A |
Sent: | September 04, 2019 08:23:13 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88476215
Mark: X·PAND
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Correspondence Address:
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Applicant: DLF Pickseed USA, Inc.
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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: September 04, 2019
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue.
In the prior Office action, the trademark examining attorney refused registration of the mark based on the following: specimen refusal for failure to show the applied-for mark in use in commerce with the goods in the application. In addition, applicant was required to amend the identification of goods. Based on applicant’s response on August 2, 2019, the following requirement has been satisfied: requirement to amend identification of goods. See TMEP §713.02. Additionally, the following refusal is withdrawn: specimen refusal. See TMEP §§713.02, 714.04.
The following is a SUMMARY OF ISSUES that applicant must address:
• Section 2(e)1 Refusal – Merely Descriptive
Applicant must respond to all issues raised in this 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).
SECTION 2(e)1 REFUSAL – MERELY DESCRIPTIVE
Applicant has applied to register the standard character mark X·PAND for “acrylic co-polymer in the nature of a chemical preparation used as a soil stabilizer and dust palliative for dust and erosion control and for protecting the soil from water and wind erosion; growing media for plants, namely, compressed coir particles as a growth medium; horticultural products, namely, soil amendments that are incorporated into or onto a turf, lawn or soil profile for creating a health medium for increased root growth and/or a smoother turf or lawn surface cut or appearance; planting soil; potting soil; soil additives” in International Class 1; and “flower seeds, namely, wildflower seeds and wildflower seed mixtures” in International Class 31.
Applicant should note that there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same. Thus, consumers are likely to perceive the wording X·PAND as a novel spelling and the phonetic equivalent of the wording “expand”.
The attached evidence from Collins Dictionary online defines the wording “to expand” as “to make greater in size, bulk, scope, etc.; enlarge; dilate; extend”. Importantly, applicant’s specimen of record indicates that applicant’s various soils and flower seed mixtures “expand[s] 400%” and “expand[s] to 4 lbs”. As such, the wording “expand” is merely descriptive of a feature of applicant’s goods which presumably expand with the addition of water. Because purchasers would perceive the wording X·PAND as the equivalent of the descriptive word “expand”, the wording X·PAND in the applied-for mark also is merely descriptive of a feature of applicant’s goods.
“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark describes only one significant function, attribute, or property. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371. In this case, the applied-for mark describes a significant attribute of applicant’s goods, that is, the ability to expand.
Because the applied-for mark is merely descriptive of a feature of applicant’s goods and services, applicant’s mark must be refused under Trademark Act Section 2(e)(1).
ADVISORY – SECTION 2(f) SUGGESTED BASED ON FIVE YEARS’ USE
To amend the application to Section 2(f) based on five years’ use, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit the following written statement claiming acquired distinctiveness, if accurate:
The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08. This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
RESPONSE GUIDELINES
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
/Oreoluwa Alao/
Oreoluwa Alao
Examining Attorney
Law Office 108
(571) 270-7210
oreoluwa.alao@uspto.gov
RESPONSE GUIDANCE