Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88176299 CLINIQUE(Standard Characters, see http://uspto.report/TM/88176299/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examining Attorney issued a refusal for Applicant?s mark CLINIQUE, Serial No. 88176299, due to an assertion that Applicant?s specimen does not show the applied-for mark in use in commerce in International Class 45. However, Applicant?s specimen satisfies all legal requirements and demonstrates that the applied-for mark is used for social networking services. A trademark application must include a specimen showing the applied-for mark in use in commerce for each class of services, showing use of the mark in commerce on or in connection with the goods, or in the sale or advertising of the services. 15 U.S.C. Section 1051(a)(1); 37 C.F.R. Section 2.34(a)(1)(iv), 2.56(a). The specimen must show proper use in commerce of the mark, which may be established by (1) showing the mark used or displayed as a service mark, which includes use in the course of rendering or performing the services, or (2) showing the mark used or displayed in advertising the services, which encompasses marketing and promotional materials. See On- Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1088, 56 USPQ2d 1471, 1476-77 (Fed. Cir. 2000); In re Metriplex, Inc., 23 USPQ2d at 1316; In re Red Robin Enters., 222 USPQ 911, 914 (TTAB 1984) (stating that "rendition" of services is properly viewed as an element of the "sale" of services); 37 C.F.R. ?2.56(b)(2). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP Section 1301.04(f)(ii). Screenshots of apps depict proper service-mark use of the mark in connection with the identified services where the displayed screenshot clearly and legibly shows the mark associated with the identified services as the services are rendered or performed via the app. TMEP 1301.04(h)(iv) (D). A mark shall be deemed to be in use in commerce on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.? TMEP ?1301.04(i). Applicant submitted a screenshot of the official CLINIQUE Instagram account for online social networking services in the field of beauty and personal care in Class 45. This specimen shows proper use in commerce of the mark because it clearly shows the CLINIQUE mark being associated, used and displayed as a service mark for the identified services as the services are normally rendered by the app. The term ?social networking? is defined as ?the use of dedicated websites and applications to interact with other users, or to find people with similar interests to oneself.? See Exhibit A. The term ?social media? refers to ?websites and applications that enable users to create and share content or to participate in social networking.? See Exhibit B. Instagram is one of the most popular social media platforms to date. See Exhibit C. Not only is Instagram used for social networking purposes, but the app is also heavily utilized by businesses for promoting, marketing and advertising their products and services. See Exhibit D. Further, the Clinique Instagram is a public account that is used to promote and highlight numerous popular Clinique beauty and personal care products available for sale and promotes interaction with its users. Therefore, this specimen shows use of the direct association between the mark and the services. In view of the above, Applicant respectfully request that this refusal be withdrawn, and the mark CLINIQUE proceed to registration.

EVIDENCE
Evidence has been attached: Exhibits A -D
Original PDF file:
evi_122264196-20200610161 923842635_._CLINIQUE_Spec imen_Refusal__ROA_cl_45_E XHIBITS_A-D.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Clinique Laboratories, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      767 Fifth Avenue
      New York, New York 10153
      United States
      Email Address: XXXX
      212-277-2323
      (212) 277-2355
Proposed: Clinique Laboratories, LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      767 Fifth Avenue
      New York, New York 10153
      United States
      Email Address: XXXX
      212-277-2323
      (212) 277-2355
Correspondence Information (current):
      DONNA M. RUGGIERO
      PRIMARY EMAIL FOR CORRESPONDENCE: uspto@estee.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Donna M. Ruggiero
      PRIMARY EMAIL FOR CORRESPONDENCE: uspto@estee.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): osl-tm@estee.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /dmr/     Date: 06/10/2020
Signatory's Name: Donna M. Ruggiero
Signatory's Position: Attorney of Record New York Bar Member

Signatory's Phone Number: 2122772323

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    DONNA M. RUGGIERO
   THE ESTEE LAUDER COMPANIES INC.
   TRADEMARK DEPARTMENT
   767 FIFTH AVENUE
   NEW YORK, New York 10153
Mailing Address:    Donna M. Ruggiero
   THE ESTEE LAUDER COMPANIES INC.
   TRADEMARK DEPARTMENT
   767 FIFTH AVENUE
   NEW YORK, New York 10153
        
Serial Number: 88176299
Internet Transmission Date: Wed Jun 10 16:31:35 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.X.XXX-20200610163135491
415-88176299-7107e5143b89c767348b025ad83
0313484b7f31e18d4de8524d48a44d702da5db-N
/A-N/A-20200610161923842635