U.S. Application Serial No. 79357884
Mark: PLANT GLIDER
| Correspondence Address: Sandercock & Cowie 1/410 Burwood Highway Wantirna South VIC 3152 AUSTRALIA |
Applicant: Rotacaster Wheel Pty Ltd
Reference/Docket No. N/A
Correspondence Email Address:
International Registration No. 1702169
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned (see https://www.uspto.gov/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at https://tsdr.uspto.gov/, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
Introduction
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.
Summary of Issues
Email Address Required
U.S. Counsel Required
Search Results - No Conflicting Marks Found
The trademark examining attorney has searched the USPTO database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Section 2(e)(1) – Merely Descriptive Refusal
Registration is refused because the applied-for mark merely describes the function and/or purpose of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
Here, applicant has applied to register the mark PLANT GLIDER for use in connection with “Trolleys (furniture); pedestals for plant pots; pedestals for flower pots; flower-pot pedestals; flower pot pedestals; pot plant stands; stands for flower pots; flower pot stands; flower-stands (furniture); stands for flowers; stands for plants; plant supports; horticultural frames (racks), not of metal, for supporting trays; non-metallic furniture supports; non-metallic tree supports; support stands (furniture); tree stands for locating (supporting) cut trees in an upright position; tree and plant supports and protectors, not of metal; plant supports being furniture (movable)” in Class 020 and "Holders for containers for plants; indoor terrariums (plant cultivation); watering devices for plants (other than machines or automatic); plant containers of plastic; plant holders; plant holders made of plastics materials; bases for plant pots; plant containers in the nature of pots; plant pot holders; plant pots; pot holders; pots for plants; holders for flowers and plants (flower arranging); flower pots; flower-pot holders; pots for flowers; tubs made of plastics for containing flowers" in Class 021.
The combination of PLANT, wording that appears in the identification several times and means "any of a kingdom (Plantae) of multicellular eukaryotic mostly photosynthetic organisms typically lacking locomotive movement or obvious nervous or sensory organs and possessing cellulose cell walls," and GLIDER, which means "one that glides" and "something that aids gliding," immediately conveys that applicant's various plant-related trolleys, pot holders, stands, and other products glide. See attached dictionary definitions from Merriam-Webster. Specifically, the identifications confirm that applicant is providing various plant-related
trolleys, pot holders, stands, and other products. Further, applicant's
website indicates that its plant-related goods are designed to glide across the ground with ease. See attached screenshots from applicant's website. Taken together, this evidence establishes that consumers will understand the terms in the mark as merely describing the function and/or purpose of applicant's various plant-related goods.
Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable. In re Zuma Array Ltd., 2022 USPQ2d 736, at *7 (TTAB 2022); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016); TMEP §1209.03(d); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1255, 103 USPQ2d 1753, 1758 (Fed. Cir. 2012) (holding SNAP SIMPLY SAFER merely descriptive for various medical devices, such as hypodermic, aspiration, and injection needles and syringes); In re Fallon, 2020 USPQ2d 11249, at *12 (TTAB 2020) (holding THERMAL MATRIX merely descriptive of a heat-responsive, malleable liner that is an integral component of an oral dental appliance).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Omniome, Inc., 2020 USPQ2d 3222, at *4 (TTAB 2019) (citing In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983)); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services. Specifically, the combination PLANT GLIDER does not create a new or non-descriptive meaning. Consumers will understand the composite phrase as merely describing the function and/or purpose of applicant's goods, namely, that its various products are designed to allow plant pots, holders, and the like to glide across the ground.
Therefore, for the foregoing reasons, the mark is merely descriptive of applicant’s goods, and therefore, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) 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.
Identification of Goods – Amendment Required
The wording “Trolleys (furniture); flower-stands (furniture); plant supports; horticultural frames (racks), not of metal, for supporting trays; non-metallic furniture supports; non-metallic tree supports; support stands (furniture); tree stands for locating (supporting) cut trees in an upright position; tree and plant supports and protectors, not of metal; plant supports being furniture (movable)” in the identification of goods for International Class 020 is indefinite and must be clarified because more information is needed as to the nature of these goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Holders for containers for plants; indoor terrariums (plant cultivation); watering devices for plants (other than machines or automatic); plant containers of plastic; bases for plant pots; plant containers in the nature of pots; plant pot holders; holders for flowers and plants (flower arranging); tubs made of plastics for containing flowers” in the identification of goods for International Class 021 is indefinite and must be clarified because more information is needed as to the nature of these goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
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). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
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.
Email Address Required
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).
U.S. Counsel Required
Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories must be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §2.11(a); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as outside of the United States or its territories. For more information, see the U.S. Counsel webpage at https://www.uspto.gov/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at https://www.uspto.gov/trademarks-getting-started/why-hire-private-trademark-attorney.
To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at https://teas.uspto.gov/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at https://teas.uspto.gov/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii); TMEP §604.01.
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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
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.