UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/520971
APPLICANT: BrandNew, LLC
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CORRESPONDENT ADDRESS: MANUEL R. VALCARCEL GREENBERG TRAURIG, P.A. 1221 BRICKELL AVENUE MIAMI, FLORIDA 33131
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK: BRANDNEW
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CORRESPONDENT’S REFERENCE/DOCKET NO: 55792.010000
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/520971
The assigned examining attorney has reviewed the referenced application and determined the following.
Search Results
Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial No. 78-237315. 37 C.F.R. §2.83.
There may be a likelihood of confusion between the applicant’s mark and the mark in the above noted application under Section 2(d) of the Act. The filing date of the referenced application precedes the applicant’s filing date. If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).
Section 2(e)(1) - Descriptive Refusal
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). Here, the mark, which is the phonetic equivalent of “brand new,” merely describes a desireable characteristic of the subject matter goods of the identified services, namely, that the beauty products are “new.”
Supplemental Register
Although the examining attorney has refused registration on the Principal Register, the applicant may amend the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Drawing
The drawing displays the mark as BRANDNEW. However, this differs from the display of the mark on the specimen, where it appears as BRANDNEW, LLC. The applicant must either:
(1) submit a new drawing of the mark that agrees with the specimen; or
(2) submit a substitute specimen that shows use of the mark shown in the drawing.
37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i). The applicant may not amend the drawing if the amendment would materially alter the character of the mark. 37 C.F.R. §2.72(a); TMEP §807.14(a).
If a substitute specimen is submitted, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.
The requirements for a standard character drawing submitted on paper are as follows:
· a sheet of nonshiny white paper that is separate from the application and is 8 to 8.5 inches wide by 11 to 11.69 inches long (or 20.3 to 21.6 cm. wide and 27.9 to 29.7cm. long);
· one of the shorter sides of the sheet should be regarded as its top edge;
· include the caption “DRAWING PAGE” at the top of the drawing beginning one inch (2.5 cm.) from the top edge;
· depict the mark in black print;
· depict all letters and words in the mark in Latin characters;
· depict all numerals in the mark in Roman or Arabic numerals; and
· the mark includes only common punctuation or diacritical marks as shown on the Office’s official table of acceptable standard characters.
37 C.F.R. §§2.52(a) and 2.54; See TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.06.
NOTE: The Trademark Rules pertaining to drawings were amended on November 2, 2003. For applications filed prior to November 2, 2003, applicants may follow either the new standard character drawing rules or the typed drawing rules in force prior to their amendment on November 2, 2003. Exam Guide 01-03, section I.A.9.
Applicant must submit the following standard character claim: “The mark is presented in standard character format without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
Specimen
The specimen is unacceptable as evidence of actual service mark use because it shows the mark used as a tradename, not as a service mark. The applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §2.56. Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09.
Fee Increase
Fee increase effective January 1, 2003
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Richard A.Straser/
Trademark Examining Attorney
Law Office 114
(703) 308-9114, ext. 178;
www.ecom114@uspto.gov
fax no. (703) 746-8114
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.