To: | I&T ENTERPRISE, INC. (ipdocket@rhemalaw.com) |
Subject: | U.S. Trademark Application Serial No. 90009521 - ST25 - N/A |
Sent: | March 21, 2022 06:56:49 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
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: March 21, 2022
This Office action is in response to Applicant’s communication filed on December 6, 2021. After reviewing this application, the trademark examining has determined the following:
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 internet webpages that shows that “ST25” is the varietal name for rice. Specifically, the trademark examining attorney has attached to the present action evidence showing that “ST25” has been used widely to identify a type of rice. In fact, discussions of the origin of this wording for rice and its generic significance are widely available, including:
· “Recently, the sign “ST25”, the name of a Vietnamese rice variety, produced a delectable and premium rice product that garnered international recognition and received the “world’s Best Rice” award.”
· “The rice variety of with the name “ST25”, which was developed and successfully bred by Mr. Ho Quang Cua and his associates, a group of agricultural engineers in Soc Trang province, has produced rice with long grain, no chalkiness, when cooked, the rice is fragrant, sticky and has a very appealing sweet taste, the aroma of pineapple leaves, and the rice retains its fragrance when cooled.”
· “The initials “ST” stand for “Soc Trang” province, a Mekong Delta province where the “ST25” rice variety is developed and bred.”
· “ST25 rice is a specialty rice in Soc Trang, popular with consumers.”
· “ST25 rice belongs to the ST aromatic rice line with many different varieties created and improved by engineer Ho Quang Cua (DNTN Ho Quang Tri, Soc Trang) for over 20 years. Earlier, ST24 rice also won the first price of the Vietnam delicious rice contest held by the Vietnam Food Association.”
See attachments. When used in this manner, the term “ST25” would immediately press on the ordinary consumer as a varietal name of rice, and Applicant’s first use or evidence of a few people’s opinions that Applicant submitted with its response to the previous Office action would not overcome the perception of the genericness of the term.
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 “ST25” has ever been used or will be used as a varietal or cultivar name; and
(2) Whether “ST25” 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.
Applicant cannot overcome this refusal by submitting a claim of acquired distinctiveness under Trademark Act Section 2(f). See 15 U.S.C. §1052(f). Such a claim would be insufficient because “generic terms cannot be rescued by proof of distinctiveness or secondary meaning no matter how voluminous the proffered evidence may be.” Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1370, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018) (quoting In re Northland Aluminum Prods., 777 F.2d 1556, 1558, 227 USPQ2d 961, 962 (Fed. Cir. 1985)); see TMEP §1212.02(i).
RESPONSE TO OFFICE ACTION
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.
/Dawn Han/
Examining Attorney
Law Office 107
(571) 272-0399
dawn.han@uspto.gov
RESPONSE GUIDANCE