| To: | Afimilk Agricultural Cooperative Ltd. (yael@e-cabilly.com) |
| Subject: | U.S. Trademark Application Serial No. 88727962 - AFIFARM - FIP-T-144-US |
| Sent: | February 19, 2020 06:04:13 PM |
| Sent As: | ecom104@uspto.gov |
| Attachments: |
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. 88727962
Mark: AFIFARM
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Correspondence Address: YAEL ROUACH CABILLY; CABILLY & CO. |
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Applicant: Afimilk Agricultural Cooperative Ltd.
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Reference/Docket No. FIP-T-144-US
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: February 19, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF USPTO DATABASE OF MARKS
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
SUMMARY OF ISSUES:
· Sections 1 and 45 Refusal – Unacceptable Specimen For Software
· Entity Type Requires Clarification
· Identification of Goods Requires Amendment
SECTIONS 1 AND 45 REFUSAL – UNACCEPTABLE SPECIMEN FOR SOFTWARE
Specimen is not an acceptable display for software. Registration is refused because the specimen in International Class 9 is not acceptable as a display associated with downloadable software and does not show the applied-for mark as actually used in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), (b)(1); TMEP §§904, 904.03(e), (g), 904.07(a). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
A display specimen for downloadable software (1) must show use of the mark directly associated with the goods and (2) such use must be of a point-of-sale nature. 37 C.F.R. §2.56(b)(1). To show use of a point-of-sale nature, a specimen generally must provide sufficient information to enable the user to download or purchase the software from a website. See TMEP §904.03(a) (citing In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957 (TTAB 2012)).
In this case, the specimen does not provide the means to enable the user to download or purchase the software from the website. See In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re Azteca Sys., Inc., 102 USPQ2d at 1957; TMEP §904.03(e), (i). Specifically, the provided specimen is merely a “product catalog” displaying the mark and advertising software for the automation and management of dairy farms. The specimen does not provide a means for customers to purchase or download applicant’s software, and is thus merely advertising material.
Accordingly, such material is mere advertising, which is not acceptable as a specimen for goods. See In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019) (citing Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 130, 144 USPQ 430, 432 (C.C.P.A. 1965)); see also Avakoff v. S. Pac. Co., 765 F.2d 1097, 1098, 226 USPQ 435, 436 (Fed. Cir. 1985); TMEP §904.04(b), (c).
Examples of specimens. Specimens for downloadable software include instruction manuals or screen printouts from (1) webpages showing (a) the mark associated with the software and (b) ordering or purchasing information or information sufficient to download the software, (2) the actual program while running that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program. See TMEP §904.03(e), (i), (j). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. 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 software 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.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
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, applicant must also respond to the requirements set forth below.
ENTITY TYPE REQUIRES CLARIFICATION
Applicant’s business name includes the foreign business designation “Cooperative Ltd.”; however, applicant set forth “be’eravon mugbal” as the legal entity in the application. This legal entity, however, is generally considered the equivalent of a “limited company.” See TMEP app. D. Therefore, applicant must clarify the entity type in the application. See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i). Applicant may satisfy this requirement by amending the legal entity to one of those immediately listed above from Appendix D of the Trademark Manual of Examining Procedure (TMEP) for this business designation, as appropriate. See TMEP §803.03(i).
Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “be’eravon mugbal” in this instance than to the legal entities listed in TMEP Appendix D. See id.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
IDENTIFICATION OF GOODS REQUIRES AMENDMENT
Class 9
The identification for “Software program for processing the data collected from the hardware, namely, milking sensors and cows sensors” in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42. See TMEP §1402.03(d). The entry “scientific, electronic, optical, weighing, measuring, signalling, supervision and teaching apparatus and instruments for use in dairy farms” is indefinite and requires amendment because it does not recite goods with sufficient particularity. Applicant must provide the common commercial name of the apparatus and instruments recited. The entry “data processing equipment and computers” must be amended to indicate and replace the term “equipment” with “apparatus” to enhance the clarity of the goods. The entry “software product used as management tool for dairy farm managers and dairy herd management systems used to gather and analyze data on milk yield, milk quality, milk conductivity and the health and activity of the individual animal and groups of animals” is indefinite and requires amendment because the wording “software” does not clearly recite the nature of the goods. Applicant may amend the entry to clarify the goods are in a downloadable or recorded form, and clarify the type of management the software provides. Similarly, the subsequent entry for “software that provides animal ID for the milking parlors, provides calving alert, provides animal behaviour report, provides lameness detection, insemination and fertility and provides feeding program for an individual animal” is indefinite and requires amendment to clarify the goods are in a downloadable or recorded form. Additionally, the abbreviation “ID” must be clarified to indicate the meaning of this term (e.g., identification).
Applicant may adopt the following identifications:
Class 9: [clarify format, e.g., Downloadable] computer software program for
processing the data collected from the hardware, namely, being milking sensors and cows sensors; scientific, electronic, optical, weighing, measuring, signalling, supervision and teaching apparatus and
instruments in the nature of [indicate common commercial name of apparatus and instruments, e.g., computers and electronic analyzers for testing milk for the presence
of blood] for use in dairy farms; data processing equipment apparatus and computers; [clarify format, e.g., downloadable] software used as a [clarify type of
management, e.g., database] management tool for dairy farm managers and dairy herd management systems used to gather and analyze data on milk yield, milk quality, milk
conductivity and the health and activity of the individual animal and groups of animals; [clarify format, e.g., downloadable] software
that provides animal ID identification for the milking parlors, provides calving alert, provides
animal behaviour report, provides lameness detection, insemination and fertility and provides feeding program for an individual animal.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
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.
ASSISTANCE
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 and requirements 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.
How to respond. Click to file a response to this nonfinal Office action.
Donegan, Daniel
/Daniel Donegan/
Trademark Examining Attorney
Law Office 104
daniel.donegan@uspto.gov
(571) 270-0455
RESPONSE GUIDANCE