| To: | Lancaster Foods, LLC (culver@mwzb.com) |
| Subject: | U.S. Trademark Application Serial No. 88625476 - LANCASTER - GSI-15-T |
| Sent: | December 23, 2019 03:37:58 PM |
| Sent As: | ecom128@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88625476
Mark: LANCASTER
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Correspondence Address: |
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Applicant: Lancaster Foods, LLC
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Reference/Docket No. GSI-15-T
Correspondence Email Address: |
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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: December 23, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the following. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH RESULTS:
The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
REFUSAL – APPLIED-FOR MARK IS A VARIETAL NAME
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 attached evidence from the USDA that shows that “LANCASTER” is the varietal name for the vegetables corn, leek, lettuce, and soybean.
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).
INFORMATION REQUIRED REGARDING APPLIED-FOR MARK
To permit proper examination of the applied-for mark, applicant must indicate the following:
(1) Whether “LANCASTER” has ever been used or will be used as a varietal or cultivar name; and
(2) Whether “LANCASTER” 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).
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.
Advisory
Because the mark is prominently composed of a varietal name, the applicant may:
A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “LANCASTER” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage; or
2. Amend the identification of goods to remove any live plants and agricultural seeds. Applicant may adopt the following description, if accurate:
Class 029 – sliced and prepared produce, namely, fruits and vegetables exclusive of corn, leek, lettuce, and soybean
Class 031 – fresh produce, namely, fruits and vegetables exclusive of corn, leek, lettuce, and soybean
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at U.S. Acceptable Identification of Goods and Services Manual (ID Manual). See TMEP §1402.04.
Applicant should note the following additional ground for refusal.
AMENDMENT TO THE IDENTIFICATION OF GOODS
The identification of goods is overbroad and must be clarified according to the explanations and suggestions below. See TMEP §1402.01. This wording could identify in more than one international class. For example, “sliced and prepared produce, namely, fruits and vegetables” is in Class 029 and “fresh produce, namely, fruits and vegetables” is in Class 031.
Applicant may adopt the following for its identification of goods and services, if accurate, providing additional specificity where indicated (changes in bold):
Class 029 – sliced and prepared produce, namely, fruits and vegetables
Class 030 – Acceptable as written
Class 031 – Fresh produce, namely, fruits and vegetables
While the suggested wording above provides examples of wording that meets the Office’s requirements for specificity, it does not provide every possible acceptable identification. Applicant must ensure that any identification submitted is accurate, concise, properly classified, and does not include goods or services not included in the identification submitted with the application as originally filed. Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at U.S. Acceptable Identification of Goods and Services Manual (ID Manual). See TMEP §1402.04.
MULTIPLE CLASS APPLICATION REQUIREMENT
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least three classes; however, applicant submitted a fees sufficient for only two classes. Applicant must either:
(a) submit the filing fees for the classes not covered by the submitted fees, or
(b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. Applicant needs a specimen for classes 029 and 031. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
Failure to pay any additional fees or restrict the application to the number of classes covered by the fee already paid could result in the entire application being abandoned for failure to respond.
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Applicant should note the additional ground for refusal.
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 029 and 031. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).
Specifically, the specimen is just a roll of stickers without specific mark information as to what the sticker will be applied to. As such, the specimen does not show the applied-for mark in use in commerce in connection with the goods specified in in the application.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that
(a) Was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and
(b) Shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.
A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement; or
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fees and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
To submit a verified specimen or verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form:
1. Answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” do the following for each relevant class for which a specimen is being submitted:
2. Check the box next to the following statement: “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored”;
3. Under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes);
4. Describe in the box below where you attached the file what the specimen consists of; and,
5. Check the box next to the following statement below the specimen description (to ensure that the declaration language is inserted into the form): “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application” [for an application based on Section 1(a), Use in Commerce]. Additionally, when submitting a verified specimen, the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
DESCRIPTION OF THE MARK
Applicant may adopt the following description, if accurate:
Mark Description: The mark consists of the word LANCASTER with the letters formed by pieces of colored produce: the "L" is yellow bananas, the "A" (two occurrences) is orange carrots with green tops, the "N" is green open pea pods, the "C" is a tan and a lighter shade of orange crookneck squash, the "S" is red strawberries with green leaves, the "T" is green broccoli, the "E" is green asparagus, and the "R" is yellow and orange corn with green husk.
For information on how to depict the mark in an application, also referred to as the drawing of the mark, applicant is encouraged to view the USPTO’s Trademark Information Network Video number 5, “Drawing issues.”
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Use the Response to Office Action to file a response.
The USPTO must receive applicant’s complete response to this letter within six months of the issue/mailing date.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USTPO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
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.
/Tracy Myers/
Examining Attorney
Law Office 128
(571)270-3056
Tracy.Myers@USPTO.gov
RESPONSE GUIDANCE
