UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 5/28/2019

 

The referenced application 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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:

 

• Indefinite Identification of Goods and Services must be Addressed
• Multi-Class Advisory
• Information Request & Advisory: Portion of or Entire Mark Potentially Deceptively Misdescriptive
• Disclaimer of “Kimono” Required

 

1. INDEFINITE IDENTIFICATION OF GOODS AND SERVICES MUST BE ADDRESSED

 

Applicant has identified its goods and services to include wording that is indefinite, overly broad, and/or includes goods or services in multiple classes as explained in the following paragraphs.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.   Suggestions for amendments to the identification are identified below as well as a proposed corrected whole-form identification.

 

Applicant must clarify the identified wording and/or classifications in the identification of goods for International Classes 25 and 28 and for the services in International Class 35 for the reasons set forth below:

 

Indefinite wording: Applicant must clarify the below identified wording in the identification of goods in International Classes 18, 25 and 28 because it is indefinite and too broad, specifically, bags, harness, cosmetic bags, baby doll, breast shapers, petals, pasties, bra inserts, slips, teddy, corsets, chemisoles, nightie, tees, swimwear accessories, and headgear.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  For example, “baby doll” could describe a type of pajama in International Class 25 or a type of toy in International Class 28.  Petals could describe a type of nipple covers or could describe artificial flowers in International Class 26.  See the suggestions below.

 

Misclassification:  The goods “leather and imitation leather belts” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 25.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Headgear:  The word “headgear” in the identification of goods must be clarified because it is indefinite and too broad without further clarification.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This word is indefinite because it does not make clear what the goods are.  Further, this wording could identify goods in more than one international class.  For example, this word could include “sports helmets” in International Class 9, “orthodontic headgear” in International Class 10, “headwear” in International Class 25, or “headwear for dolls” in International Class 28.

 

Applicant may (1) amend “headgear” to “headwear,” if accurate, and/or (2) retain “headgear,” add “namely,” and then list the specific types of headgear items and classify the goods accordingly (e.g., headgear, namely, sports helmets in International Class 9; headgear, namely, orthodontic headgear in International Class 10; and headgear, namely, sports caps in International Class 25).  Given the overbroad nature of “headgear,” the wording after “namely” must identify the goods with sufficient specificity that it would be considered definite and properly classified absent the term “headgear.”

 

Retail store services:  The activities identified as “retail store services” in International Class 35 are indefinite because the items features in the retail store services must be specified, e.g., retail store services featuring clothing, luggage, and handbags.

 

Further, applicant’s mark “KIMONO WORLD” includes the word “KIMONO,” which implies that applicant’s retail store services deals with selling kimonos.  However, if kimonos are not sold as part of applicant’s retail services, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified services.  See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).

 

To avoid such refusal, applicant may amend the identification to specify that it sells kimonos as part of its services.  See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. 

 

Applicant may adopt the following wording, if accurate: 

 

Luggage; bags, namely {Specify the purpose or type of bag, i.e., athletic bags, all purpose carrying bags.}; wallets; whips; harnesses; cosmetic bags sold empty; purses in International Class 18.    

 

Lingerie, shapewear, baby doll pajamas, stockings, breast shapers in the nature of adhesive bras, petals in the nature of nipple cover pasties, nipple cover pasties, bra inserts, bras, bralette, slips being underclothing, teddies being underclothing, romper, bodysuits, corsets being underclothing, bustiers, camisoles, chemisoles, chemises, negligee, bikinis, brassiere, girdle, nightgown, nightie, leotard; socks; tee shirts; t-shirts; sweatshirts; swimwear; swimwear accessories, namely {Specify type of accessory in Class 25, i.e., swim caps}; headwear; shoes, namely, sandals; leather and imitation leather belts in International Class 25

 

Retail store services featuring {indicate field of goods, e.g., kimonos, lingerie} in International Class 35

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

2. MULTI-CLASS ADVISORY

 

 The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that could be classified in at least 4 classes; however, applicant submitted fees sufficient for only 3 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

3. INFORMATION REQUEST & ADVISORY: PORTION OF OR ENTIRE MARK POTENTIALLY DECEPTIVELY MISDESCRIPTIVE

 

The nature of the services in International Class 35 with which applicant intends to use or is using the mark is not clear from the present record and additional information is required.  To permit proper examination of the application, applicant must provide the following:

 

(1)       A written statement explaining whether the services do or will consist of applicant selling kimonos.

 

(2)       A sample of advertisements or promotional materials featuring the services, or if such materials are not available, applicant must submit samples of advertisements or promotional materials of similar services. 

 

(3)       A written statement describing in detail the nature, purpose, and channels of trade of the services.

 

See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant website information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Applicant is advised that, if applicant’s response to the request for information indicates that the services identified in the application do not or will not feature kimonos, registration may be refused for the services in International Class 35 on the ground that the applied-for mark is deceptively misdescriptive.  15 U.S.C. §1052(e)(1); see In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514, 1515-16 (TTAB 1993); TMEP §§1203.02(e), 1209.04.

 

4. DISCLAIMER OF “KIMONO” REQUIRED

 

Applicant must disclaim the word “KIMONO” for its services in International Class 35.  

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the word “KIMONO.”  That unregistrable term, at best, is merely descriptive of a function of applicant’s services in International Class 35.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).  An applicant may not claim exclusive rights to terms that others may need to use to describe its goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int'l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991).  DeWalt, Inc. v. Magna Power Tool, 289 F.2d 656, 662, 129 USPQ 275, 281 (CCPA 1961).

 

In this case, applicant's mark comprises, in part, the term “KIMONO,” which, according to The American Heritage Dictionary, is “a long, wide-sleeved Japanese robe worn with an obi and often elaborately decorated.” (See the attached dictionary definition). The term immediately informs the purchasers of an aspect of the goods being sold and is therefore descriptive. Specifically, applicant sells clothing, and one item can be kimonos. The word “KIMONO” in this context informs the purchasers of an item available for purchase.

The attached webpages from various retailers below shows the word “KIMONO” is commonly used by kimono retailers to indicate one of the main goods that they sell, thereby reinforcing the determination that the word “KIMONO” merely describes applicant’s services.

 

The Kimono House in New York City http://thekimonohouse.com/  

Kimono Shop Japan http://www.shop-kimono.com/

Kimono Flea Market Ichiroya http://www.ichiroya.com/

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “KIMONO” apart from the mark as shown. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Response guidelines:

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal and/or requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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.  

 

/Edward J. Germick/

Examing Attorney

Law Office 102

(571) 272-5862

edward.germick@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/28/2019 FOR U.S. APPLICATION SERIAL NO. 88331282

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/28/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.