To: | Kushner IP Holdings LLC (ip@akerman.com) |
Subject: | U.S. Trademark Application Serial No. 88310980 - EBB'S COASTAL KITCHEN LONG BRANCH, - 11574-14 |
Sent: | December 09, 2019 03:16:30 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88310980
Mark: EBB'S COASTAL KITCHEN LONG BRANCH,
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Correspondence Address: 777 S. Flagler Dr., Ste 1100 West Tower
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Applicant: Kushner IP Holdings LLC
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Reference/Docket No. 11574-14
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 09, 2019
The statement of use 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.
SECTIONS 1 AND 45 REFUSAL – MARK DIFFERS ON DRAWING AND SPECIMEN
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 43, which is required in the statement of use. 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(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as the wording “LONG BRANCH, NEW JERSEY”, “COASTAL KITCHEN”, and shaded circles in navy blue surrounding a navy blue circle with a pink inner circle that has the wording “EBB'S” in navy blue appearing in its center, all appearing on a white background that features partial blue outlined vegetables. However, the drawing displays the mark as the wording "LONG BRANCH, NEW JERSEY", "COASTAL KITCHEN", and shaded circles in navy blue surrounding a navy blue circle with a pink inner circle that has the wording "EBB'S" in navy blue appearing in its center, all appearing on a beige background. The mark on the specimen does not match the mark in the drawing because it shows the mark on a different colored background, namely, white, that also features additional design elements not present in the drawing, namely, blue outlined vegetables. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the statement of use, and (b) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use.
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).
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, the proposed mark as shown in the specimen creates a different meaning than the mark in the drawing. The mark in the specimen, i.e., “EBB’S COASTAL KITCHEN LONG BRANCH NEW JERSEY” (plus circle and vegetable designs), creates the impression of an individual owner of a restaurant featuring or otherwise related to vegetables located in Long Branch New Jersey; while the mark as shown in the drawing, i.e., “EBB’S COASTAL KITCHEN LONG BRANCH NEW JERSEY” (plus circle designs), creates the impression of an individual owner of a restaurant located in Long Branch New Jersey. Thus, the mark as shown on the specimen creates a mark that conveys a different meaning than the mark in the drawing. As a result, amending the drawing to conform to the mark as shown in the specimen would materially alter the mark as shown in the original application.
In addition, applicant may not respond by withdrawing the statement of use. See 37 C.F.R. §2.88(f); TMEP §1109.17.
For more information about drawings and instructions on how to satisfy this response option online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
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.
ASSISTANCE
How to respond. Click to file a response to this nonfinal Office action.
Rhoda Nkojo
/Rhoda Nkojo/
Examining Attorney
Law Office 117
(571) 272-8468
Rhoda.Nkojo@uspto.gov
RESPONSE GUIDANCE