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: 6/7/2019

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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:

• Identification Requirement
• Multi-Class Identification Advisory
• Class 35 Disclaimer Requirement
• Partial Abandonment Advisory 

 

IDENTIFICATION REQUIREMENT

 

Applicant has identified the following goods and services:

 

In International Class 9:

Portable selfie lights; magnetically encoded gift cards; gift cards for digital delivery

 

In International Class 14:

Rubber or silicone wristbands in the nature of a bracelet

 

In International Class 25:

Clothing, namely, t-shirts, sweatshirts and hoodies

 

In International Class 35:

Retail outlets featuring dental impression kits, orthodontic and dental supplies, giftware and access to licensed dental professionals; online retail store services featuring dental impression kits, orthodontic and dental supplies, giftware, gift cards, and clothing and accessories

 

The wording “Portable selfie lights” in the identification of goods is indefinite and must be clarified because the nature of the goods as photography equipment is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. And, the wording “gift cards for digital delivery” in the identification of goods for International Class 9 is indefinite and must be clarified because the identification does not make clear if the gift cards are downloadable. 

 

Further, the identification of “retail outlets featuring dental impression kits, orthodontic and dental supplies, giftware and access to licensed dental professionals” in the identification of services in International Class 35 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass retail store services featuring goods that can be licensed to dental professionals, or access to actual dental services, which would be classifies in Class 44.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 9:

Portable selfie lights for use in mobile phone photography; magnetically encoded gift cards; downloadable gift cards for digital delivery

 

International Class 14:

Rubber or silicone wristbands in the nature of a bracelet

 

International Class 25:

Clothing, namely, t-shirts, sweatshirts and hoodies

 

International Class 35:

Retail outlets featuring dental impression kits, orthodontic and dental supplies, giftware and accessories for license to dental professionals; online retail store services featuring dental impression kits, orthodontic and dental supplies, giftware, gift cards, and clothing and accessories

 

International Class 44:

Dental Services, namely, {specify services provided, e.g. hygienist services, cosmetic procedures, dental imaging services} provided by licensed dental professionals

 

Identification Amendment Advisories

 

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 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.

 

MULTI-CLASS IDENTIFICATION ADVISORY:

 

The application references goods and services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and services based on use in commerce that are classified in at least 5 classes; however, applicant submitted fees sufficient for only 4 classes.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimens are acceptable for classes 9, 14, 25, and 35; and applicant needs a specimen for class 44.  See more information about specimens.

 

            Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. 

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. 

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the

 

CLASS 35 DISCLAIMER REQUIREMENT

 

Applicant should note, this requirement is limited to the services identified in International Class 35 only.

 

The applied-for mark is SMILE DIRECT CLUB and identifies “Retail outlets featuring dental impression kits, orthodontic and dental supplies, giftware and access to licensed dental professionals; online retail store services featuring dental impression kits, orthodontic and dental supplies, giftware, gift cards, and clothing and accessories” in International Class 35.

 

Applicant must provide a disclaimer of the unregistrable parts 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 wording “DIRECT CLUB” because it is not inherently distinctive.  These unregistrable terms are, at best, merely describe featured method by which applicant’s services are provided.  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).  Specifically, consumers join a “CLUB” in order to have applicant’s goods shipped “DIRECT” to them.

 

The attached definition from The Merriam-Webster Dictionary shows that the term “DIRECT” means “proceeding from one point to another in time or space without deviation or interruption…proceeding by the shortest way.” See http://www.merriam-webster.com/dictionary/direct. And, the attached definition from The Oxford Dictionary shows that the word “CLUB” means “A commercial organization offering subscribers special benefits.” See http://en.oxforddictionaries.com/definition/us/club. Thus, the phrase “DIRECT CLUB” describes a company that provides members with DIRECT access to certain goods, that is provides the goods without a middleman.

 

Further, the attached evidence from applicant’s website shows that applicant provides a monthly subscription service with orthodontic and dental supplies. See http://smiledirectclub.com/. Applicant states that they “send your clear aligners and premium whitening directly to you.” Similarly, the attached articles from Forbes and Business Insider show that “DIRECT to consumer” sales is a common method of retail services. See http://www.forbes.com/sites/veronikasonsev/2019/05/30/direct-to-consumer-brands-are-out-marketing-traditional-retailers-but-it-comes-at-a-cost/#4052145c1320; http://www.businessinsider.com/online-direct-to-consumer-brands-with-retail-stores-locations-2018-2. And, the attached examples from Dollar Shave Club and Trunk Club show the term “CLUB” is generally used by direct to consumer retailers to indicate to consumers the type of retail services they provide. See http://www.dollarshaveclub.com/; http://www.trunkclub.com/womens. Thus, the terms “DIRECT CLUB” describe the featured method through which applicant’s retail services are conducted.

 

Finally, the USPTO commonly requires a disclaimer of the terms “DIRECT” and “CLUB” for retail services provided directly to consumers. See attached Registration Nos. 5726354, 5764748, 5406084, 5593953, 5737376, 5461096, 5671760, 5653280, 5658157, and 87721568. The terms “DIRECT CLUB” for class 35 retail services convey to consumers the featured method through which applicant’s services are provided, and must be disclaimed.

 

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

 

No claim is made to the exclusive right to use “DIRECT CLUB” in International Class 35 apart from the mark as shown. 

 

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

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not timely respond to this Office action, the identifications of “Portable selfie lights” and “gift cards for digital delivery” in International Class 9, and all the services identified in International Class 35 will be deleted from the application.  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following goods only:

 

International Class 9:

Magnetically encoded gift cards

 

International Class 14:

Rubber or silicone wristbands in the nature of a bracelet

 

International Class 25:

Clothing, namely, t-shirts, sweatshirts and hoodies.

 

See TMEP §718.02(a). 

 

RESPONSE AND ASSISTANCE

 

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 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. 

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

 

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.  

 

 

/Rebecca Eubank/

Trademark Examining Attorney

Law Office 116

Phone: (571) 270-5577

Rebecca.eubank@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 6/7/2019 FOR U.S. APPLICATION SERIAL NO. 88356711

 

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 6/7/2019 (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.