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Attorney Docket: 2010-00133

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
TRADEMARK EXAMINING OPERATION
In re Application of:
APPLICANT : FLORIDA GARDEN SUPPLIES, INC.
MARK : FLORIDA GARDEN SUPPLIES (stylized mark and word mark)
SER. NO. : 76707559
FILING DATE : 2011-05-10
_____________________________________________________________________

TEAS RESPONSE/NO FEE
Assistant Commissioner for Trademarks
2900 Crystal Drive, South Tower
Arlington, VA 22202-3513

Examiner: Nelson B. Snyder III
Trademark Examining Attorney
Law Office 107
(571) 272-9284
[email protected]

RESPONSE UNDER 37 C.F.R. §2.62

Dear Nelson:

In response to Office Action Nr. 1 in the above-identified trademark application.

Applicant respectfully requests reconsideration of the Trademark Attorney’s refusal to register on the
following grounds:

1. Applicant must clarify the identification of services.

2. The description of the mark is accurate but incomplete.

3. The word element is inherently distinctive Section 2(f) and requires amendment and affidavit.

4. Applicant must disclaim the descriptive unitary phrase “GARDEN SUPPLIES.”

AMENDMENT

1. Applicant hereby amends the identification of goods and services as follows: International
Class: 035, Retail lawn, garden and nursery stores, selling namely featuring, herbicides,
insecticides, fertilizers, seeds, substrate, drain components, pesticides, hydroponic garden kits,
growing containers and fungicides for home and professional use

InterAmerican Plaza 701 SW 27 AV Suite 707, Miami Florida 33135 USA

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Attorney Docket: 2010-00133

2. Applicant hereby amends the mark’s description as follows: The mark consists of the wording
“FLORIDA GARDEN SUPPLIES” to the left of a dot and three stylized wavy lines
representing leaves.

3. Applicant hereby amends solicits registration on the Principal Register under Trademark Act
Section 2(f), based on acquired distinctiveness to the words “FLORIDA GARDEN
SUPPLIES.” The wording “FLORIDA GARDEN SUPPLIES” has become distinctive of the
services through applicant’s substantially exclusive and continuous use in commerce for at least
the five years immediately before the date of this statement.

4. Applicant hereby amends and disclaims the application as follows: No claim is made to the
exclusive right to use “GARDEN SUPPLIES” apart from the mark as shown.

ARGUMENTS AND REMARKS

Applicant has amended the description of goods and services.

1. Applicant has amended the application’s identification of goods and services as follows: Retail
lawn, garden and nursery stores, featuring, herbicides, insecticides, fertilizers, seeds, substrate,
drain components, pesticides, hydroponic garden kits, growing containers and fungicides for
home and professional use.

2. According to the Examiner’s remarks, Applicant has clarified the identification of services by
replacing the indefinite wording “selling namely” with “featuring.”

Applicant has completed de description of the mark.

3. As suggested by the Examiner, the Applicant provides for a more complete description of the
mark as follows: The mark consists of the wording “FLORIDA GARDEN SUPPLIES” to the
left of a dot and three stylized wavy lines representing leaves.

Applicant has amended the application to Section 2(f)-in-part based on five years’ use for the
wording “FLORIDA GARDENS SUPPLIES.”

4. The Examiner stated: “The application record indicates that applicant has used its mark for a
long time; therefore, applicant can seek registration on the Principal Register under Trademark
Act Section 2(f), based on acquired distinctiveness.” Applicant believes that there is enough
evidence in the record to support a claim under Section 2(f) for the words “FLORIDA
GARDEN SUPPLIES.” These include; Exhibit A, Maximum Yield magazine ad; Exhibit B,
info sheet where it states that Maximum Yield is the “premier magazine in the outdoor
gardening industry;” Exhibit C, Florida Department of State incorporation record; Exhibit D, ad
in Maximum Yield Magazine both online and print; Exhibit E, accounting software printout;
and Exhibit F, national sales receipts. All found in the Surelis Salcerio affidavit on the original
application.

5. Applicant has amended the application to include the wording “FLORIDA GARDEN
SUPPLIES” has become distinctive of the services through applicant’s substantially exclusive

InterAmerican Plaza 701 SW 27 AV Suite 707, Miami Florida 33135 USA

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Attorney Docket: 2010-00133

and continuous use in commerce for at least the five years immediately before the date of this
statement.

6. Applicant has verified this statement with an affidavit or signed declaration under 37 C.F.R.
§2.20 attached as Exhibit A.

Applicant has disclaimed the descriptive unitary phrase “GARDEN SUPPLIES.”

7. Applicant has disclaimed the generic term “SUPPLIES” in the original application. However,
Examiner argues that Applicant must disclaim the descriptive unitary phrase “GARDEN
SUPPLIES” apart from the mark as shown because it appears to be generic for the Applicant’s
services.

8. Applicant has used the standard format used by the Office: “No claim is made to the exclusive
right to use “GARDEN SUPPLIES” apart from the mark as shown,” to amend its application.

CONCLUSION

Applicant respectfully requests that the refusal on the basis of that; Applicant must clarify the
identification of services, the description of the mark is accurate but incomplete, the word element is
inherently distinctive Section 2(f) and requires amendment and affidavit, and that Applicant must disclaim
the descriptive unitary phrase “GARDEN SUPPLIES.”

Applicant has amended the application, and submits an affidavit to comply with all of the Examiner’s
refusal. Applicant notices that Examiner has searched the Office’s database of registered and pending
marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).

In view of the foregoing remarks, Applicant respectfully submits that all of the stated grounds of
rejections have been properly traversed, accommodated, or rendered moot. Accordingly, Applicant
respectfully request that the application is in condition for allowance and respectfully request such action.

Respectfully submitted,

EDAM LAW PLLC
Attorneys at Law
InterAmerican Plaza
701SW 27TH AV Suite 707
By:
Miami, Florida 33135 EDMAR M. AMAYA, LL.M. ESQUIRE
Tel No. + 1 (305) 643-0740 Florida Bar No. 063816
Fax No. +1 (786) 219-0581

InterAmerican Plaza 701 SW 27 AV Suite 707, Miami Florida 33135 USA

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