Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  January 28, 2020

 

 

This Office action is in response to applicant’s communication filed on December 7, 2019.  The applicant (1) amended the recitation of services, and (2) argued against the requirement to disclaim the term “DIRECT CLUB.”

 

The proposed amendment to the recitation of services is unacceptable.

The requirement to amend the recitation of services and to disclaim the term DIRECT CLUB are continued and made FINAL.

 

Recitation of Services

The wording “and also coordinating treatment by licensed dental professionals through teledentistry” in the identification of services is unacceptable because coordinating treatment is not a type of retail or access service.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may substitute the following wording, if accurate:  Retail outlets featuring dental impression kits, orthodontic and dental supplies, giftware, and providing referrals, appointment scheduling services to licensed dental professionals; online retail store services featuring dental impression kits, orthodontic and dental supplies, giftware, gift cards, and clothing and accessories.

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 services may not later be reinserted.  See TMEP §1402.07(e).

 

Disclaimer

The examining attorney continues to require that the applicant disclaim the descriptive words “DIRECT CLUB.”  Trademark Act Section 6(a), 15 U.S.C. Section 1056 (a).  Registration is refused and this requirement is made FINAL pursuant to 37 C.F.R. 2.64 for the reasons stated below.

 

The applicant argued that the term “DIRECT CLUB” does not directly and immediately describe the purpose or function of its services, (2) some imagination or thought is required for consumers to discern the nature or qualities of tis services, (3) they do not run or maintain a club, or offer club membership services, and (4) the mark is intended to suggest to consumers that associating with applicant will allow then to show they are part of the proverbial “in crowd”.   

 

The dictionary definitions made of record in the first Office action established that DIRECT refers to proceeding from one point to another in time or space without deviation or interruption… proceeding by the shortest way, and CLUB refers to a commercial organization offering subscribers special benefits.

 

Applicant’s attention is directed to the evidence attached from applicant’s website showing 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.

 

In addition, applicant’s website invites consumers to “JOIN the CLUB.”  http://smiledirectclub.com/how_it_works/

 

Thus, the terms “DIRECT CLUB” describes the featured method through which applicant’s retail services are conducted.  (See additional evidence showing the term DIRECT CLUB been used in a descriptive way as applied to retail services.)

 

 

 

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.  

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Alice Benmaman/

Examining Attorney

Law Office 116

(571) 272-9126

alice.benmaman@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 28, 2020 for

U.S. Trademark Application Serial No. 88356725

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

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

 

 

/Alice Benmaman/

Examining Attorney

Law Office 116

(571) 272-9126

alice.benmaman@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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 28, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

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.”