To: | OMS Investments, Inc. (trademarks@scotts.com) |
Subject: | U.S. Trademark Application Serial No. 90021570 - SOUTHERN ROOTS GARDEN COMPANY - N/A |
Sent: | September 09, 2020 09:09:13 PM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90021570
Mark: SOUTHERN ROOTS GARDEN COMPANY
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Correspondence Address: 10250 CONSTELLATION BLVD., SUITE 2800
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Applicant: OMS Investments, Inc.
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Reference/Docket No. N/A
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: September 09, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
DISCLAIMER REQUIRED
Applicant must disclaim the wording “ROOTS” and “GARDEN COMPANY” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The word “ROOTS” means “any subterranean plant part (such as a true root or a bulb, tuber, rootstock, or other modified stem) especially when fleshy and edible,” according to the attached dictionary evidence. Applicant’s goods are used for roots to enable them to be planted. Therefore, the word “ROOTS” is descriptive and must be disclaimed.
The wording “GARDEN COMPANY” describes the source or provider of the services. Terms that describe the provider of a product or service may also be merely descriptive of the product and/or service. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1301, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (affirming Board’s finding that NATIONAL CHAMBER was merely descriptive of online service providing directory information for local and state chambers of commerce and business and regulatory data analysis services to promote the interest of businessmen and businesswomen); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and shin guards); TMEP §1209.03(q).
The word “GARDEN” means “something that is used for tending plants, or something that is ordinary,” according to the attached dictionary evidence. Applicant’s goods include “Garden soil,” which is used for tending plants. Therefore, the word “GARDEN” is descriptive, if not generic, for the identified goods.
Further, business type designations and abbreviations such as “Company,” “Corporation,” “Inc.,” “LLC,” and “Ltd.” or family business designations such as “& Son’s” or “Bros.” merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d 1522, 1526 (TTAB 2006); In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ROOTS” and “GARDEN COMPANY” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE GUIDELINES
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.
/Shaila E. Lewis/
Trademark Examining Attorney
Law Office 114
(571) 270-1527 (phone)
(571) 270-2527 (fax)
Shaila.Lewis@uspto.gov
RESPONSE GUIDANCE