| To: | KIMONO INTIMATES, INC. (tmdocket@pearne.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 87886657 - KIMONO INTIMATES - KIMO-59130 |
| Sent: | 8/17/2018 8:16:07 AM |
| Sent As: | ECOM117@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 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 87886657
MARK: KIMONO INTIMATES
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: KIMONO INTIMATES, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 8/17/2018
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.
SECTION 2(d) REFUSAL FOR LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3947270 and 5234477. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01.
Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
Applicant’s mark is KIMONO INTIMATES.
The mark in registration number 3947270 is KIMONO ROSE.
The mark in registration number 5234477 is KOMONO.
In this instance, the first term in the applicant’s mark, namely, KIMONO, is identical to the first term in registration 3947270 and sounds similar to the entirety of the mark in registration 5234477. Neither the additional terms of the applicant and registration 3947270 nor the slight difference in sound in registration 5234477 is sufficient to obviate the likelihood of confusion.
In view of the above, the marks contain identical and similar terms which are likely to cause consumers to be confused and/or mistaken as to whether the marks originate from the same source.
Comparison of the Goods and Services
Applicant’s goods and services are:
Class 3: PERFUME, DEODORANT, BODY SPRAY, ESSENTIAL BODY OIL, BODY LOTION
Class 18: LEATHER AND IMITATION LEATHER BELTS, LUGGAGE, BAGS, WALLETS, CARRIERS, WHIPS, HARNESS, COSMETIC BAGS, PURSES
Class 35: RETAIL STORE SERVICES
The relevant goods in registration number 3947270 are:
Class 3: Bar soap; Bath salts; Body cream; Body lotion; Body wash; Bubble bath; Cologne; Hand cream; Hand lotions; Scented room sprays
The relevant goods and services in registration number 5234477 are:
Class 3: Cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, hair care preparations; dentifrices; toilet water, cosmetics, make-up preparations, deodorants and antiperspirants for personal use, bath oils, bubble bath, bath cream, shower foam, shower gels, shaving creams, beauty creams, day creams, cosmetic skin lotions, cosmetic lotions, body milk, cosmetic sun oils, cosmetic sun milk, wipes impregnated with cosmetic lotions, eyebrow pencils, eye liner, mascara, make-up powder, lipsticks, cleansing milk; blusher; liquid foundation and powder foundation; shampoo, henna for cosmetic purposes, hair creams, hairspray, nail varnish
Class 18: Hand bags; travel baggage; bank card holders, credit card holders, bank card cases and credit card cases of leather; leather credit card holders; wallets; travel garment bags; make-up bags, not fitted; sports bags; athletics bags; shoulder bags; shopping bags made of skin; school book bags; shoe bags for travel; beach bags; diaper bags; rucksacks; travelling cases; canvas shopping bags; overnight bags; general purpose trolley bags on wheels; trolley suitcases on wheels; satchels; vanity cases, not fitted; leather; boxes of leather; briefcases; harness made from leather; umbrellas; leather leashes; leather shoulder straps
Class 35: Wholesale and retail store services and import and export agencies all featuring bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, hair care preparations, dentifrices, toilet water, cosmetics, make-up preparations, deodorants and antiperspirants for personal use, bath oils, bubble bath, cream bath, shower foam, shower gels, shaving creams, beauty creams, day creams, skin lotions, lotions, body milk, sun oils, sun milk, wipes impregnated with cosmetic lotions, eyebrow pencils, eye liner, mascara, make-up powder, lipsticks, cleansing milk, blusher, liquid foundation and powder foundation, shampoo, henna, hair creams, hairspray, nail varnish, make-up kits, spectacles, sunglasses, spectacle lenses and frames, contact lenses, spectacle cases, chains and cords, parts and fittings for all of the aforesaid goods, covers for multimedia players, covers for mobile telephones, dvd jackets, jackets for cds, sheaths for computer cables, covers for apparatus for the reproduction of sound, covers for handheld devices, covers for electronic agendas, covers for video cameras and covers for photographic cameras, horological and chronometric instruments, jewellery, precious stones, earrings, rings, necklaces, bracelets, decorative pins of precious metal, shoe ornaments of precious metal, boxes of precious metal, pins, tie clips, cufflinks, watch straps, hand bags, baggage, card holders, card cases of leather, leather credit card holders, wallets, hand bags, travel garment covers, make-up bags, not fitted, sports bags, athletics bags, shoulder bags, shopping bags made of skin, school book bags, shoe carriers for travel, beach bags, diaper bags, rucksacks, travelling cases, canvas bags, overnight bags, trolleys, satchels, vanity cases, not fitted, leather, chests and boxes of leather, briefcases, harness made from leather, umbrellas, leather leashes, coats, jackets, trousers, skirts, tops, waterproof clothing, topcoats, belts for wear, shoulder straps for clothing, dresses, heavy jackets, sweaters, jeans, cloaks, parkas, shirts, t-shirts, cardigans, underwear, baby- doll nightdresses, bathrobes, swimwear, negligees, bathing suits, dressing gowns, shawls, scarves, ties, neckties, sweatshirts, undershirts, polo shirts, teddies, shorts, stockings, socks, footwear, slippers, overshoes, galoshes, wooden shoes, soles for footwear, boot uppers, boots, ski boots, ankle boots, espadrilles, sandals, bath sandals, gloves, mittens, hats and caps; and the bringing together, for the benefit of others enabling consumers to conveniently compare and purchase goods, of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, hair care preparations, dentifrices, toilet water, cosmetics, make-up preparations, deodorants and antiperspirants for personal use, bath oils, bubble bath, cream bath, shower foam, shower gels, shaving creams, beauty creams, day creams, skin lotions, lotions, body milk, sun oils, sun milk, wipes impregnated with cosmetic lotions, eyebrow pencils, eye liner, mascara, make-up powder, lipsticks, cleansing milk, blusher, liquid foundation and powder foundation, shampoo, henna, hair creams, hairspray, nail varnish, make-up kits, spectacles, sunglasses, spectacle lenses and frames, contact lenses, spectacle cases, chains and cords, parts and fittings for all of the aforesaid goods, covers for multimedia players, covers for mobile telephones, dvd jackets, jackets for cds, sheaths for computer cables, covers for apparatus for the reproduction of sound, covers for handheld devices, covers for electronic agendas, covers for video cameras and covers for photographic cameras, horological and chronometric instruments, jewellery, precious stones, earrings, rings, necklaces, bracelets, decorative pins of precious metal, shoe ornaments of precious metal, boxes of precious metal, pins, tie clips, cufflinks, watch straps, hand bags, baggage, card holders, card cases of leather, leather credit card holders, wallets, hand bags, travel garment covers, make-up bags, not fitted, sports bags, athletics bags, shoulder bags, shopping bags made of skin, school book bags, shoe carriers for travel, beach bags, diaper bags, rucksacks, travelling cases, canvas bags, overnight bags, trolleys, satchels, vanity cases, not fitted, leather, chests and boxes of leather, briefcases, harness made from leather, umbrellas, leather leashes, coats, jackets, trousers, skirts, tops, waterproof clothing, topcoats, belts for wear, shoulder straps for clothing, dresses, heavy jackets, sweaters, jeans, cloaks, parkas, shirts, t-shirts, cardigans, underwear, baby- doll nightdresses, bathrobes, swimwear, negligees, bathing suits, dressing gowns, shawls, scarves, ties, neckties, sweatshirts, undershirts, polo shirts, teddies, shorts, stockings, socks, footwear, slippers, overshoes, galoshes, wooden shoes, soles for footwear, boot uppers, boots, ski boots, ankle boots, espadrilles, sandals, bath sandals, gloves, mittens, hats and caps
Regarding registration 3947270, the goods of the applicant are identical in part and otherwise closely related to the goods of the registrant. Specifically, both parties provide “body lotion” with the remaining goods being closely related.
As the attached evidence shows, those who provide body lotion are likely to provide a wide variety of cosmetics such as perfume, cologne, deodorant, and/or body and bath products. For example:
Next, regarding registration 5234477, the goods and services of the applicant and registrant are identical in part and otherwise encompass one another or are closely related. Specifically, both parties offer perfumery, deodorant, lotions, bags, wallets, harnesses, and purses with the remaining goods being closely related. Further, the applicant’s retail store service encompass the retail store services of the registrant.
As the attached evidence shows, those who provide body lotion are likely to provide a wide variety of cosmetics such as perfume, cologne, deodorant, and/or body and bath products. Further, please see the attached evidence that shows that those who provide leather goods such as belts, luggage, and bags are also likely to provide a variety of leather goods. For example:
This evidence establishes that the same entity commonly manufactures/produces/provides the relevant goods and markets the goods under the same mark. Further, it shows that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Further, the application uses broad wording to describe retail store services, which presumably encompasses all services of the type described, including registrant’s more narrow retail store services for specific goods. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
However, the compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In view of the above, registration is refused under Section 2(d) of the Trademark Act.
PRIOR PENDING APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should note the following additional ground for refusal.
2(e)(1) REFUSAL FOR A MERELY DESCRIPTIVE MARK
This refusal is limited to class 35.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s 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)).
Applicant has applied to register KIMONO INTIMATES for “RETAIL STORE SERVICES”.
The proposed mark is a combination of descriptive terms that immediately conveys a characteristic and/or feature of the applicant’s services.
Generally, if the individual components of a mark retain their descriptive meaning in relation to the services, the combination results in a composite mark that is itself descriptive and not registrable. In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012); TMEP §1209.03(d); see, e.g., In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows where the evidence showed that the term “BREATHABLE” retained its ordinary dictionary meaning when combined with the term “MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); 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 services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, as reflected in the attached dictionary evidence, the term KIMONO is defined as “a loose dressing gown or jacket,” and the term “intimate” is defined as “of a very personal or private nature”. Thus, taken together, the wording KIMONO INTIMATES merely describes a characteristic and/or feature of the applicant’s goods, namely, retail store services which sell loose dressing gowns or jackets that are of a very personal or private nature. In further support of this position, please see the attached evidence from thecut.com which states that the primary good sold through the retail services will be lingerie.
The term must be analyzed in relation to the services recited, the context in which it is used, and the possible significance it would have to the recipient of the services. In re Pencils, 9 USPQ2d at 1411.
In view of the above, registration is refused under Trademark Act Section 2(e)(1).
While applicant need not respond to the potential refusals, applicant must respond to the refusals above and requirements set forth below.
IDENTIFICATION OF GOODS AND SERVICES
The wording “leather and imitation leather belts” in the identification of goods for International Class 18 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass leather and imitation leather belts in class 25 and leather and imitation leather shoulder belts in class 18.
The wording “bags” in the identification of goods for International Class 18 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass shoulder bags in class 18 and laundry bags in class 22.
The wording “carriers” in the identification of goods for International Class 18 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass suit carriers in class 18 and cargo carriers for vehicles in class 12.
The wording “harness” in the identification of goods for International Class 18 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass harness for animals in class 18 and climber’s harness in class 28.
Finally, the wording “retail store services” in the identification of goods is indefinite and must be clarified because the type of goods must be indicated to put others on notice as to the scope of the services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identification, if accurate:
Class 3: perfume, deodorant for personal use, body spray, essential body oils, body lotion
Class 5: air deodorant
Class 12: cargo carriers for vehicles
Class 18: leather and imitation leather should belts, luggage, shoulder bags, wallets, suit carriers, whips, harness for animals, cosmetic bags sold empty, purses
Class 22: Laundry bags
Class 25: leather and imitation leather belts
Class 28: Climbers’ harness
Class 35: Retail store services featuring _____ {e.g., cosmetics, leather goods, lingerie}
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.
MULTIPLE CLASS REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least eight classes; however, applicant submitted a fee sufficient for only three classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
DISCLAIMER REQUIRED
This requirement is limited to applicant’s current classes 3 and 18.
The attached evidence from Merriam-Webster.com shows the term “intimate” means “of a very personal or private nature”. Therefore, the wording merely describes a characteristic of the goods and/or the goods sold through retail services, namely, goods which are personal or private in nature. In further support of this position, please see the attached evidence from thecut.com which states that the primary good sold through the retail services will be lingerie.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “INTIMATES” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
RESPONSE GUIDELINES
/Christopher M. Nunley/
Examining Attorney
Law Office 117
(571) 270-3782
Christopher.Nunley@uspto.gov
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
