NOTE TO THE FILE
SERIAL NUMBER: 88236312
DATE: 03/20/2019
NAME: lelliott
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/Applicant via:
phone Left message with
email Attorney/ApplicantRequested Law Library search 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:X OTHER:
From: Chinhwei Chen [mailto:shirleychen@jcipgroup.com]
Sent: Wednesday, March 20, 2019 10:44 AM
To: Elliott, Lashawnda <Lashawnda.Elliott@USPTO.GOV>
Cc: usa@jcipgroup.com; jcipo@jcipgroup.com
Subject: Re: ACTION REQUIRED: GEARBEST, 88236312
Dear Attorney Advisor,
Thank you for your kind notification. We understand the definiteness required for the identification of goods and/or services.
In respect of the issue mentioned in your email, therefore, our Client clarified that the term “accessories” used in the services in Class 35 actually refers to “accessories for clothing and ornaments”. Please amend the problematic wording in Class 35 accordingly.
After your review, however, if the addition of the wording “ornaments” is not acceptable, please amend the identification of services in Class 35 as proposed in your email. That is,
“International Class 35: Advertising and publicity services; Computerized on-line ordering featuring general consumer merchandise; Demonstration of goods; Distribution and dissemination of advertising materials; On-line advertising on a computer network; On-line retail department store services; On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring consumer electronics goods, phones, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, appliances, office supplies, automotive and motorcycle supplies, watches, jewelry, accessories for clothing, clothing, shoes, bags, games, toys, sporting goods, outdoors goods, tools, home and garden supplies, baby goods, kids goods, electronic cigarettes, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures; Providing an on-line commercial information directory on the internet; Provision of an on-line marketplace for buyers and sellers of goods and services; Retail and on-line grocery store services featuring home delivery service; Sales promotion for others"
We appreciate your kind assistance in this matter. Thank you.
Best regards,
Chinhwei Chen
=============================================
JIANQ CHYUN Intellectual Property Group
7F, NO. 100, ROOSEVELT RD., SEC. 2, TAIPEI 10084, TAIWAN, R.O.C.
TEL: 886-2-2369-2800 FAX: 886-2-2369-7233; 2369-7234
E-mail: JCIPO@JCIPGroup.com
Web Site: www.JCIPGroup.com*****CONFIDENTIAL ATTORNEY-CLIENT AND/OR WORK PRODUCT PRIVILEGED COMMUNICATION********************
This message may contain confidential information, attorney-client communication, and/or attorney work product. If you are not the intended recipient and received this message in error, any use or distribution is strictly prohibited. Please notify us immediately by return e-mail, and delete this message from your computer system. Thank you in advance for your kindly cooperation.
On Mar 20, 2019, at 1:05 AM, Elliott, Lashawnda <Lashawnda.Elliott@USPTO.GOV> wrote:
Dear Chinhwei Chen,
Thank you for providing an amended description of the mark. After reviewing the application again, I realize there is an issue with the in the identification of services.
The wording “accessories” in the identification of services is indefinite and must be clarified because the nature of the accessories are not clear. Applicant may adopt wording, such as accessories for clothing. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
International Class 35: Advertising and publicity services; Computerized on-line ordering featuring general consumer merchandise; Demonstration of goods; Distribution and dissemination of advertising materials; On-line advertising on a computer network; On-line retail department store services; On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring consumer electronics goods, phones, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, appliances, office supplies, automotive and motorcycle supplies, watches, jewelry, accessories for {specify, e.g., clothing}, clothing, shoes, bags, games, toys, sporting goods, outdoors goods, tools, home and garden supplies, baby goods, kids goods, electronic cigarettes, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures; Providing an on-line commercial information directory on the internet; Provision of an on-line marketplace for buyers and sellers of goods and services; Retail and on-line grocery store services featuring home delivery service; Sales promotion for others
Please note that International Classes 7, 9, and 28 are acceptable as written.
Once the applicant provides a definite identification of services, I can make the change through an Examiner’s Amendment and add the amended description of the mark. Please note that applicant can provide authorization via email, telephone, or online. If you have any questions, please feel free to reach me via telephone (571) 272-5409 or email lashawnda.elliott@uspto.gov.
I would appreciate a response by close of business on Wednesday, March 20, 2019, as I have an internal deadline to meet.
Regards,
LaShawnda Elliott
Attorney Advisor, Trademarks
United States Patent and Trademark Office
Law Office 125
Phone: (571) 272-5409
Email: lashawnda.elliott@uspto.gov
From: Chinhwei Chen [mailto:shirleychen@jcipgroup.com]
Sent: Tuesday, March 19, 2019 1:14 AM
To: Elliott, Lashawnda <Lashawnda.Elliott@USPTO.GOV>
Cc: usa@jcipgroup.com; jcipo@jcipgroup.com
Subject: Re: ACTION REQUIRED: GEARBEST, 88236312
Dear Attorney Advisor,
Thanks for your email. As to the color issue specified therein, please be advised that color is NOT a feature of the mark. Therefore, we would like to amend the description of the mark as suggested, that is:
The mark consists of the stylized wording “GEARBEST” with a device on the left. The device appears to be a rounded square with a curved band design inside.
We appreciate your prompt assistance in this Application. Please let us know should there be any other issues afterwards.
Best regards,
Chinhwei Chen
=============================================
JIANQ CHYUN Intellectual Property Group
7F, NO. 100, ROOSEVELT RD., SEC. 2, TAIPEI 10084, TAIWAN, R.O.C.
TEL: 886-2-2369-2800 FAX: 886-2-2369-7233; 2369-7234
E-mail: JCIPO@JCIPGroup.com
Web Site: www.JCIPGroup.com*****CONFIDENTIAL ATTORNEY-CLIENT AND/OR WORK PRODUCT PRIVILEGED COMMUNICATION********************
This message may contain confidential information, attorney-client communication, and/or attorney work product. If you are not the intended recipient and received this message in error, any use or distribution is strictly prohibited. Please notify us immediately by return e-mail, and delete this message from your computer system. Thank you in advance for your kindly cooperation.
On Mar 19, 2019, at 12:56 AM, Elliott, Lashawnda <Lashawnda.Elliott@USPTO.GOV> wrote:
Dear Chinhwei Chen,
I reviewed the mark GEARBEST, 88236312, and there is an issue with the description of the mark.
Applicant must clarify whether color is being claimed as a feature of the mark. See 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); TMEP §§807.07(a) et seq. Applicant submitted a black-and-white drawing of the mark; however, the description of the mark references black and white. The mark in the drawing and in the description must match. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07 et seq.
To clarify whether color is claimed as a feature of the mark, applicant may satisfy one of the following:
(1) If color is not a feature of the mark, applicant must submit an amended description of the mark that omits any reference of color. See TMEP §§807.07(a)(ii), 808.02. The following is suggested, if accurate:
The mark consists of the stylized wording “GEARBEST” with a device on the left. The device appears to be a rounded square with a curved band design inside.
(2) If color is a feature of the mark, applicant must submit a (a) list all the colors that are a feature of the mark, and (b) amend the description, if appropriate, to specify where all the colors appear in the literal and design elements of the mark. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: The colors black and white are claimed as a feature of the mark.
Description: The mark consists of the stylized wording “GEARBEST” in black with a device on the left. The device appears to be a rounded square in black with a white curved band design inside.
Once the applicant provides an amended description of the mark, I can make the change through an Examiner’s Amendment. Please note that applicant can provide authorization via email, telephone, or online. If you have any questions, please feel free to reach me via telephone (571) 272-5409 or email lashawnda.elliott@uspto.gov.
I would appreciate a response by close of business on Tuesday, March 19, 2019, as I have an internal deadline to meet.
Regards,
LaShawnda Elliott
Attorney Advisor, Trademarks
United States Patent and Trademark Office
Law Office 125
Phone: (571) 272-5409
Email: lashawnda.elliott@uspto.gov