NOTE TO THE FILE
Sent to TICRS as Serial Number: 88084083SERIAL NUMBER: 88143526
DATE: 10/22/2018
NAME: pdang4
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Tedd Levine [mailto:lawofficesofteddslevine@gmail.com]
Sent: Monday, October 22, 2018 10:57 AM
To: Dang, Peter <Peter.Dang@USPTO.GOV>
Subject: Re: Trademark Applications for Tri-Coastal Design Group Inc.
1. TRI-COASTAL DESIGN (SN: 88143526)
Your proposal to amend the goods to “facial massage apparatus” are acceptable. To make sure we’re on the same page, I will be amending the identification to the following:
International class 010: Massage apparatus; facial massage apparatus
Please let me know if these changes are acceptable.
Yes
2. LILA GRACE (SNs: 88109932 and 88109937)
I will go ahead and enter the negative living individual statement into the record. However, an additional fee is required, because this statement was not provided in the initial application. Specifically, TMEP §§ 819.01 and 819.01(o) state that for a TEAS Plus application, if the mark includes an individual’s name or portrait (or could be reasonably perceived as the name of a particular living individual), the application must include either: (1) a statement that identifies the living individual whose name or likeness the mark comprises, and written consent of the individual; or (2) a statement that the name or portrait does not identify a living individual. Because this statement was not provided, an additional fee is required.
OK. But is the additional fee a new requirement?
On Mon, Oct 22, 2018 at 10:47 AM Dang, Peter <Peter.Dang@uspto.gov> wrote:
Hi Tedd,
Thank you for your response. Please see my comments below:
1. TRI-COASTAL DESIGN (SN: 88143526)
Your proposal to amend the goods to “facial massage apparatus” are acceptable. To make sure we’re on the same page, I will be amending the identification to the following:
International class 010: Massage apparatus; facial massage apparatus
Please let me know if these changes are acceptable.
2. LILA GRACE (SNs: 88109932 and 88109937)
I will go ahead and enter the negative living individual statement into the record. However, an additional fee is required, because this statement was not provided in the initial application. Specifically, TMEP §§ 819.01 and 819.01(o) state that for a TEAS Plus application, if the mark includes an individual’s name or portrait (or could be reasonably perceived as the name of a particular living individual), the application must include either: (1) a statement that identifies the living individual whose name or likeness the mark comprises, and written consent of the individual; or (2) a statement that the name or portrait does not identify a living individual. Because this statement was not provided, an additional fee is required.
Please let me know if you would like me to proceed with the amendment for TRI-COASTAL DESIGN (SN: 88143526). Let me know if you have any questions.
Thank you,
/Peter Dang/
Trademark Examining Attorney
Law Office 121
United States Patent & Trademark Office
(571) 270-1998
From: Tedd Levine [mailto:lawofficesofteddslevine@gmail.com]
Sent: Monday, October 22, 2018 10:21 AM
To: Dang, Peter <Peter.Dang@USPTO.GOV>
Subject: Re: Trademark Applications for Tri-Coastal Design Group Inc.
Hi, My responses are in RED below.
1. JADE & DEER (SN: 88105628)
a. Clarification of Identification of Goods Required
The wording “hair coil” is indefinite and must be clarified to further specify the goods. For example, applicant may clarify that these goods are in the nature of “hair ties” or “hair bands.”
The following is suggested, if accurate:
International Class 026: Hair accessories, namely, hair ties, hair scrunchies, hair clips, hair pins, and hair ties in the nature of hair coils
RESPONSE: I agree with the suggested change.
2. POSH AND POP (SN: 88086948, 88086985, and 88141997)
a. Disclaimer Required
For each of these applications, a disclaimer of the word “POSH” is required, because this wording is merely descriptive of applicant’s goods. Specifically, this word is defined as “fashionable or luxurious” and is commonly used in the fashion industry to describe luxury goods. Further, applicant has previously disclaimed this word for similar goods in its other applications such as Application Serial Nos. 87396197 and 87392749. Thus, a disclaimer is required.
RESPONSE: I agree with the suggested disclaimer.
3. TRI-COASTAL DESIGN (SNs: 88084083, 88085404, 88114207, 88116500, 88118045, 88118089, 88121977, 88143567, 88143582, and 88143613 )
a. Disclaimer Required
For each application, a disclaimer of the word “DESIGN” is required. This word is defined as “to create” or “the creative art of executing aesthetic or functional designs” and is commonly used in the marketplace to describe something created or fashioned. Further, applicant has previously disclaimed this word for similar goods in its previous registrations such as U.S. Registration Nos. 4579741 and 5154558. Thus, a disclaimer is required.
RESPONSE: I agree with the suggested disclaimer.
4. TRI-COASTAL DESIGN (SN: 88143526)
a. Disclaimer Required
A disclaimer of the word “DESIGN” is required for the reasons discussed in the previous section.
RESPONSE: I agree with the suggested disclaimer.
b. Clarification of Identification of Goods Required
The wording “facial cleansing apparatus” is indefinite and must be clarified to specify the nature of the goods. For example, applicant may clarify that the goods are in the nature of “electric face cleansing brushes” in International Class 021. Thus, applicant must clarify and re-classify the goods accordingly.
The following is suggested, if accurate:
International class 010: Massage apparatus
RESPONSE: How about Facial massage apparatus in Class 10?
International Class 021: Facial cleansing apparatus, namely, electric face cleansing brushes
Applicant is advised that if it choose to add International Class 021, an additional fee will be required.
5. LILA GRACE (SNs: 88109932 and 88109937)
a. Inquiry – Name of Individual
Applicant must clarify whether the name “LILA GRACE” in the mark identifies a particular living individual. In this case, the application neither specifies whether the name in the mark identifies a particular living individual nor includes a written consent. If the mark identifies a particular living individual, applicant must submit a written consent statement and statement specifying that the mark identifies a particular living individual. If the mark does not identify a living individual, then I can enter a statement to that effect by Examiner’s amendment.
RESPONSE: The mark does not identify a living individual; a statement to that effect by Examiner’s amendment is agreeable..
b. TEAS Plus Status Lost – Additional Fee Required
Applicant must submit an additional processing fee of $125 per application, because the application did not meet the TEAS Plus application requirements. Specifically, applicant did not provide a consent to register the mark from the person identified in the mark (or conversely, a statement that the name in the mark does not identify a living individual). If applicant agrees to amend the application to provide the consent statement by Examiner’s amendment, a Priority action will be issued with the fee requirement.
RESPONSE: The mark does not identify a living individual and no such fee is required.
On Mon, Oct 22, 2018 at 9:42 AM Dang, Peter <Peter.Dang@uspto.gov> wrote:
Dear Tedd Levine,
I am the trademark examining attorney assigned to several trademark applications for your client, Tri-Coastal Design Group Inc. I have reviewed your applications and they look mostly fine, but there are a few procedural issues I would like to speak to you about before we may continue with the application process. These issues are detailed below:
1. JADE & DEER (SN: 88105628)
a. Clarification of Identification of Goods Required
The wording “hair coil” is indefinite and must be clarified to further specify the goods. For example, applicant may clarify that these goods are in the nature of “hair ties” or “hair bands.”
The following is suggested, if accurate:
International Class 026: Hair accessories, namely, hair ties, hair scrunchies, hair clips, hair pins, and hair ties in the nature of hair coils
2. POSH AND POP (SN: 88086948, 88086985, and 88141997)
a. Disclaimer Required
For each of these applications, a disclaimer of the word “POSH” is required, because this wording is merely descriptive of applicant’s goods. Specifically, this word is defined as “fashionable or luxurious” and is commonly used in the fashion industry to describe luxury goods. Further, applicant has previously disclaimed this word for similar goods in its other applications such as Application Serial Nos. 87396197 and 87392749. Thus, a disclaimer is required.
3. TRI-COASTAL DESIGN (SNs: 88084083, 88085404, 88114207, 88116500, 88118045, 88118089, 88121977, 88143567, 88143582, and 88143613 )
a. Disclaimer Required
For each application, a disclaimer of the word “DESIGN” is required. This word is defined as “to create” or “the creative art of executing aesthetic or functional designs” and is commonly used in the marketplace to describe something created or fashioned. Further, applicant has previously disclaimed this word for similar goods in its previous registrations such as U.S. Registration Nos. 4579741 and 5154558. Thus, a disclaimer is required.
4. TRI-COASTAL DESIGN (SN: 88143526)
a. Disclaimer Required
A disclaimer of the word “DESIGN” is required for the reasons discussed in the previous section.
b. Clarification of Identification of Goods Required
The wording “facial cleansing apparatus” is indefinite and must be clarified to specify the nature of the goods. For example, applicant may clarify that the goods are in the nature of “electric face cleansing brushes” in International Class 021. Thus, applicant must clarify and re-classify the goods accordingly.
The following is suggested, if accurate:
International class 010: Massage apparatus
International Class 021: Facial cleansing apparatus, namely, electric face cleansing brushes
Applicant is advised that if it choose to add International Class 021, an additional fee will be required.
5. LILA GRACE (SNs: 88109932 and 88109937)
a. Inquiry – Name of Individual
Applicant must clarify whether the name “LILA GRACE” in the mark identifies a particular living individual. In this case, the application neither specifies whether the name in the mark identifies a particular living individual nor includes a written consent. If the mark identifies a particular living individual, applicant must submit a written consent statement and statement specifying that the mark identifies a particular living individual. If the mark does not identify a living individual, then I can enter a statement to that effect by Examiner’s amendment.
b. TEAS Plus Status Lost – Additional Fee Required
Applicant must submit an additional processing fee of $125 per application, because the application did not meet the TEAS Plus application requirements. Specifically, applicant did not provide a consent to register the mark from the person identified in the mark (or conversely, a statement that the name in the mark does not identify a living individual). If applicant agrees to amend the application to provide the consent statement by Examiner’s amendment, a Priority action will be issued with the fee requirement.
There are two ways we may proceed. The first is that I can draft examiner’s amendments and make the changes with your permission. Second, I can issue Office Actions to which you must respond within 6 months. Please let me know by the end of the business day Tuesday, October 23rd. Let me know if you have any questions.
Thank you,
/Peter Dang/
Trademark Examining Attorney
Law Office 121
United States Patent & Trademark Office
(571) 270-1998
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