United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90009521
Mark: ST25
|
|
Correspondence Address: |
|
Applicant: I&T ENTERPRISE, INC.
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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: June 07, 2021
Applicant’s mark published for opposition on May 4, 2021; however, the Office of the Deputy Commissioner for Trademark Examination Policy has since accepted a Letter of Protest received in connection with this application. Therefore, jurisdiction of the application has been restored to the trademark examining attorney and the evidence presented in the letter has been forwarded to the trademark examining attorney for consideration. See TMEP §§1715, 1715.03(c).
Based upon the evidence presented in the letter, the trademark examining attorney is taking further action, as specified below. See TMEP §1715.03(c).
Registration is refused because the applied-for mark merely describes a feature of Applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Applicant’s mark “ST25”, when used in the context of the identified goods in the nature of rice, would immediately point to the ordinary consumer a characteristic and/or feature of such goods: that ST25 is a variety of rice and thus generic of the goods. See attachments of reference and discussion websites showing significance of ST25 as a variety of rice. In particular, “ST25” is the name of a rice variety from Vietnam that is processed from unhusked rice harvested. According to the deputy head of the National Office of Intellectual Property of Vietnam, ST25 cannot be trademarked, even by the developers of “the famous ST25 rice from Vietnam,” because it is a generic plant variety. The term “ST25” has been promoted, used, recognized and perceived as a particular rice variety from Vietnam, and not as an identifier of the source(s) of the rice. See attachments. Therefore, this mark merely describes the identified goods.
Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner. In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).
Based on the above discussion, the applied-for mark is therefore refused registration on the Principal Register.
In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods. “A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness” and thus is not entitled to registration on either the Principal or Supplemental Register under any circumstances. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986)); see TMEP §§1209.01(c) et seq., 1209.02(a). Therefore, the trademark examining attorney cannot recommend that applicant amend the application to proceed under Trademark Act Section 2(f) or on the Supplemental Register as possible response options to this refusal. See TMEP §1209.01(c).
How to respond. Click to file a response to this nonfinal Office action.
/Dawn Han/
Examining Attorney
Law Office 107
(571) 272-0399
dawn.han@uspto.gov
RESPONSE GUIDANCE