Examiners Amendment

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

EXAMINER’S AMENDMENT

 

 

Issue date:  August 09, 2019

 

STATUS OF THE APPLICATION

 

Pursuant to TMEP §707.03, applicant is advised of the following status of the application. An Office action was issued in this matter on May 14, 2019. In that Office action, the trademark examining attorney identified the following issues:

 

1. Likelihood of confusion with other registered marks under Section 2(d) for classes 14, 18, and 35;

 

2. Potential likelihood of confusion with three prior pending applications;

 

3. The specimen submitted for the Class 40 services did not show use in commerce for that class;

 

4. The identification of goods and services was overbroad and indefinite;

 

5. The number of classes for which registration is sought was unclear; and

 

6. Applicant had only paid fees for one class.

 

On July 15, 2019, applicant filed a response to the Office Action. In that response, applicant:

 

1. Deleted the Class 14, 18, and 35 goods and services from the identification;

 

2. Amended the remaining identifications of goods and services; and
3. Clarified the number of classes for which registration is sought (including paying fees for the additional class).

 

In light of the response and the amendment detailed below, the examining attorney has determined the following:

 

1. The Section 2(d) likelihood of confusion refusal has been resolved;

 

2. Use in commerce issue for Class 40 has been resolved;

 

3. The identification of goods and services issues have been resolved;

 

4. The number of classes for which applicant seeks registration has been clarified; and

 

5. Applicant has paid fees for all classes in the application.

 

However, marks in prior-filed pending applications may still present a bar to registration of applicant’s mark. Applicant’s amendments have resolved the potential likelihood of confusion issue for prior filed U.S. Application Serial No. 88072153. However, the filing dates of pending U.S. Application Serial Nos. 88208661 and 88196062 precede applicant’s filing date. If either mark in those applications registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, following issuance of this examiner’s amendment, action in this application will be suspended pending the disposition of the earlier-filed applications.

 

Application has been amended as shown below

 

As agreed to by Michael Kondoudis, attorney for applicant, by phone on August 1, 2019, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  Otherwise, no response is required.  Id.  In addition, applicant is advised that amendments to the goods and services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and services are not permitted.  37 C.F.R. §2.71(a).

 

Identification of Goods and Services

 

The identification of goods and services is amended to read as follows: 

 

Class 25:   Custom formal wear, namely, dresses, gowns, tuxedos, dinner jackets, trousers, and footwear; custom clothing, namely, coats, dresses, pants, skirts, shirts, vests, and jackets; Coats; Jackets; Trousers; Pants; Shirts; Shorts; Skirts; Hoodies; Dresses; Bridesmaid dresses; Evening dresses; Prom Dresses; Wedding dresses; Headwear

 

Class 40:   Custom tailoring; Custom clothing alteration; Custom dressmaking

 

See TMEP §§1402.01, 1402.01(e).

Attorney Attestation and Bar Information

Applicant’s attorney has provided his bar membership number, the name of the U.S. state in which he is barred, and the year of his admission. 37 C.F.R. §2.17(b). Applicant’s attorney has also agreed to the following statement: “The attorney of record 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).” See 37 C.F.R. §2.17(b)(3).

NO RESPONSE REQUIRED

After issuance of this examiner’s amendment, the examining attorney will suspend the application pending the resolution of U.S. Application Serial Nos. 88208661 and 88196062. If the applicant has any questions or needs further assistance, please telephone the assigned examining attorney. Further, please advise the undersigned immediately of any objections to this examiner’s amendment. Otherwise, no response is necessary.

 

 

 

/Hunter Bayliss/

Examining Attorney

Law Office 113

USPTO

571-272-6526

hunter.bayliss@USPTO.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 09, 2019 for

U.S. Trademark Application Serial No. 88314995

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Hunter Bayliss/

Examining Attorney

Law Office 113

USPTO

571-272-6526

hunter.bayliss@USPTO.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”