| To: | Sullivan, Joan M (jsullivan614@gmail.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88090787 - WW WEATHERED WINGS FURNITURE & HOME - N/A |
| Sent: | 12/11/2018 9:08:36 AM |
| Sent As: | ECOM121@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 |
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. 88090787
MARK: WW WEATHERED WINGS FURNITURE & HOME
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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: Sullivan, Joan M
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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: 12/11/2018
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered or pending marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
SUMMARY OF ISSUES:
SPECIMEN REFUSAL – ILLEGIBLE; NO REFERENCE TO SERVICES
In the present case, applicant’s applied-for mark is illegible on the specimens provided because the details within the mark cannot be identified. Thus, it cannot be determined that all of the elements in the applied-for mark as shown in the drawing are also in the applied-for mark as shown in applicant’s submitted specimens.
Secondly, the specimen does not show a direct association between the applied-for mark and the identified services; thus the specimen fails to show the applied-for mark in use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i).
Specimens consisting of advertising or promotional materials must show a direct association between the mark and the services for which registration is sought. In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ 456, 457 (C.C.P.A. 1973)); TMEP §1301.04(f)(ii). To show this direct association, the specimen must contain an explicit reference to the services, in addition to the mark being used on the specimen to identify the service and its source. In re WAY Media, Inc., 118 USPQ2d at 1698 (quoting In re Osmotica Holdings, Corp., 95 USPQ2d 1666, 1668 (TTAB 2010)); TMEP §1301.04(f)(ii). While the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the service. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, applicant’s identified services are “furniture restoration; painting; painting and varnishing; painting, interior and exterior; refinishing of furniture; restoration in the field of furniture”. The submitted specimens show a representation of the applied-for mark on applicant’s Etsy page as well as applicant’s website. From the submitted specimens, it appears applicant is providing furniture and online retail store services of furniture and decor that are, as stated from the Etsy page, “one-of-a-kind Hand-painted Boho Vintage Furniture & Art”. However, neither specimen indicates that applicant is providing the aforementioned restoration, painting, varnishing, or refinishing services. As such, the specimen does not create a proper nexus between the mark and the services, such that the specimen makes a direct link between the applied-for mark and the services rendered to identify their source.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following:
(2) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows a legible version of the mark in actual use in commerce for the services identified in the application. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application.” The substitute specimen cannot be accepted without this statement.
(3) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of all the response options referenced above and instructions on how to satisfy these options online using the Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
If applicant responds to the refusal, applicant MUST also respond to the requirements set forth below.
DISCLAIMER REQUIREMENT – DESCRIPTIVE WORDING
In this case, applicant must disclaim the wording “FURNITURE & HOME DECOR” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of the purpose and subject matter of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Firstly, the wording “FURNITURE” appears in applicant’s identification of services, “furniture restoration; refinishing of furniture; restoration in the field of furniture”. Therefore, the wording merely describes the subject matter of applicant’s services, namely they involve the restoration and refinishing of furniture.
Secondly, regarding the wording “HOME” and “DECOR”, the attached dictionary Internet evidence shows the wording “HOME” means “made, done, or intended for use in the place where one lives” and “DECOR” means “the furnishing and decoration of a room”. Thus, the wording merely describes applicant’s services because applicant is providing restoration, painting, varnishing, and refinishing services of furnishings and decorations intended for use in the place where one lives, namely, home and decor items.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “FURNITURE & HOME DECOR” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
MARK DESCRIPTION AND COLOR CLAIM REQUIREMENTS
Applicant must amend the mark description to provide an accurate, concise, and complete mark description that identifies all literal and design elements in the mark on the drawing. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02.
Accordingly, applicant must amend the mark description to address all elements of the mark and to clarify how white is being used in the mark, applicant may satisfy one of the following:
(1) If white is a feature of the mark, applicant must amend the color claim to include it. The following color claim and description are suggested, if accurate (suggestions in bold):
Color claim: The colors light blue, metallic gold, and white are claimed as a feature of the mark.
Description: The mark consists of a light blue brush stroke in the background, with two metallic gold capital W’s “WW” outlined in white and encircled in a light blue ring outlined in white and centered at the top of brush stroke. A solid metallic gold bird is placed to the lower right of the encircled “WW”. The wording “WEATHERED WINGS” is in metallic gold outlined in white and centered below the “WW” and bird near the bottom of the brush stroke. The wording “FURNITURE & HOME DECOR” is in light blue block letters outlined in metallic gold and placed right below the wording “WEATHERED WINGS”.
(2) If white is not a feature of the mark, applicant must amend the description to state that white represents background, outlining, shading and/or transparent areas and is not part of the mark. The following description is suggested, if accurate (suggestions in bold):
Color claim: The colors light blue and metallic gold are claimed as a feature of the mark.
Description: The mark consists of a light blue brush stroke in the background, with two metallic gold capital W’s “WW” encircled in a light blue ring and centered at the top of brush stroke. A solid metallic gold bird is placed to the lower right of the encircled “WW”. The wording “WEATHERED WINGS” is in metallic gold and centered below the “WW” and bird near the bottom of the brush stroke. The wording “FURNITURE & HOME DECOR” is in light blue block letters outlined in metallic gold and placed right below the wording “WEATHERED WINGS”. The color white represents transparent areas and is not part of the mark.
TMEP §807.07(d).
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address the refusal and requirements raised in this Office action. Applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
Applicant may call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and requirements in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Michael J. Clark/
Trademark Examining Attorney
Law Office 121
600 Dulany Street,
Alexandria, VA 22314
(571) 272-4967
michael.clark1@uspto.
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.
