BASF Corporation

Trademark Trial and Appeal BoardJan 17, 2016

No. 86375802 (T.T.A.B. Jan. 17, 2016)

From: Chiang, Tiffany Sent: 1/17/2016 1:19:05 PM To: TTAB EFiling CC: Subject: U.S. TRADEMARK APPLICATION NO. 86375802 - BROADBAND - BASF.AGR.T88 - Request for Reconsideration Denied - Return to TTAB ************************************************* Attachment Information: Count: 1 Files: 86375802.doc UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO) OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION U.S. APPLICATION SERIAL NO. 86375802 MARK: BROADBAND *86375802* CORRESPONDENT ADDRESS: SALVATORE A SIDOTI CUATOLO SIDOTI CO LPA 24500 CENTER RIDGE ROAD SUITE 280 CLEVELAND, OH 44145-5681 GENERAL TRADEMARK INFORMATION: http://www.uspto.gov/trademarks/index.jsp VIEW YOUR APPLICATION FILE APPLICANT: BASF Corporation CORRESPONDENT’S REFERENCE/DOCKET NO: BASF.AGR.T88 CORRESPONDENT E-MAIL ADDRESS: docket@patentandtm.com REQUEST FOR RECONSIDERATION DENIED ISSUE/MAILING DATE: 1/17/2016 The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B), 715.04(a). The following refusal made final in the Office action dated 06/29/2015 is maintained and continue to be final:  Section 2(e)(1) Mere Descriptiveness Refusal. See TMEP §§715.03(a)(ii)(B), 715.04(a). The following requirement made final in the Office action is satisfied:  Requirement to provide information about the applied-for goods. See TMEP §§715.03(a)(ii)(B), 715.04(a). In the present case, applicant’s request has not resolved the outstanding issue, nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue in the final Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues. Applicant’s request for reconsideration consists of applicant’s response to the trademark examining attorney’s request for information about the applied-for goods, and a request to suspend the application. The information provided about the applied-for goods confirm the applied-for mark is merely descriptive of a feature and characteristic of the applied-for goods. Therefore, the Section 2(e)(2) refusal is continued and maintained. In the 12/16/2014 and 06/29/2015 Office actions, the undersigned attorney attached a total of four websites that support the definition of “BROADBAND” as meaning “covering a wide scope of similar things,” and in the context of applicant’s goods, as meaning, fungicides and insecticides that eliminate a broad range of plants and insects. See American Heritage Dictionary definitions of “broad” and “band”, and Northland Community Services website, attached to the 12/16/2014 Office action; See Wikipedia entry of “broadband insecticide” attached to the 06/29/2015 Office action. Additionally, the undersigned attorney attached sixteen websites that demonstrated third-parties commonly used the term “BROADBAND” in connection with herbicide and insecticide goods to describe goods that are effective against a wide range of plants and insects, such that purchasers would immediately under the mark as conveying a salient feature and characteristic of the applied-for goods is that the goods are designed to kill a broad range of plants and insects. See Collective Evolution, dk-dox, bugwood, Sustainable Agriculture, Technolit, LungTP, Gardex Inc, and hysolv websites, attached to the 12/16/2014 Office action; See OCM 2015 2nd International Conference on Optical Characterization of Materials, Growing and Marketing Ginseng, Goldenseal and other Woodland Medicinals, Hail, Memim, The Tree Doctor, Nipcam, Total Package Property Care, High Beam websites attached to the 06/29/2015 Office action. Moreover, applicant’s Request for Reconsideration now provides information that the applied-for goods are a biological insecticide that is comprised of a fungus that acts on a variety of specific insects. Therefore, applicant’s statements make clear that a feature of the applied-for goods, is indeed, the ability to effectively eliminate more than one type of insect; in other words, the goods are designed to work against a range of insects, which meets the very definition of a “broadband” insecticide. As the evidence and statements of record demonstrate, the mark “BROADBAND” is merely descriptive of a feature of the applied-for goods because it immediately conveys a feature of the goods is that it is effective against a wide range of plants and insects. Thus, applicant’s request for reconsideration has not resolved the outstanding issues, nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issues in the final Office action. Accordingly, the request for reconsideration is DENIED. Request to suspend the application is denied Applicant has requested the instant application be suspended under TMEP §716. However, suspension under this section is only appropriate in the limited circumstance in a Section 1(b) application when a the applicant files a timely “insurance” extension request but the six-month response period to respond to a refusal issued in response to a Statement of Use may expire before the end of the extension period. See TMEP §§716.02(a), 716.06, 1108.03–1108.03(a), 1109.16(c)). Applicant’s request that the instant application be suspended to permit applicant to file an allegation of use to amend to the Supplemental Register does not meet the limited circumstance for suspension articulated under TMEP section 716. Therefore, the request to suspend the application is denied. INFORMATION REGARDING APPEAL If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a). If no appeal has been filed and time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to (1) comply with and/or overcome any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP §715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3). The filing of a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c). /Tiffany Y. Chiang/ Trademark Examining Attorney Law Office 113 (571) 272-7681 tiffany.chiang@uspto.gov