United States Patent and Trademark Office (USPTO)

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

 

 

CORRECTED NON-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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  July 31, 2019

 

 

SUMMARY OF OUTSTANDING ISSUES

This correspondence details the following bases for refusing advancement of this application:

1.         There is one potentially conflicting subject mark of a prior-filed pending application that may ultimately bar registration; and

2.         Applicant is required to submit a statement disclaiming any exclusive right to use the term “BABY” apart from the mark as presented.

NO CONFLICTING REGISTERED MARKS

The USPTO’s database of registered and pending marks has been searched and no similar registered mark has been found that would bar registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (2012).  Trademark Manual of Examining Procedure § 704.02 (October 2018).  However, there is ONE potentially conflicting pending application (attached hereto) that may present a bar to registration of the asserted mark in this application. 

Information is attached concerning pending Application Serial No. 88245610 (Filing Date: December 31, 2018).  The filing date of said application precedes Applicant’s filing date.  There may be a likelihood of confusion between Applicant’s proposed mark and the subject mark of the cited application.  Therefore, if the earlier‑filed application registers, registration may be refused under Section 2(d).  37 C.F.R. § 2.83; see 15 U.S.C. § 1052(d); TMEP § 1208.  Upon receipt of Applicant’s response to this Office Action, action on this case may be suspended pending final disposition of the earlier‑filed application. 

Applicant may present arguments relevant to the issue of a potential conflict in its response to this Office Action.  The election not to submit arguments at this time in no way limits Applicant’s right to address this issue at a later point if a refusal under Section 2(d) ultimately issues.

Applicant must respond to the following issue in any response:

PROCEDURAL REQUIREMENT

DISCLAIMER REQUIRED

Applicant is seeking to register the mark “KYLIE BABY” to indicate the source of various health and beauty care products in International Class 3.

Applicant must disclaim the term “BABY,” defined in the relevant context as “a very young child; an infant,” Am. Heritage Dictionary of the English Language (5th ed. 2019), http://www.ahdictionary.com/ (attached hereto), as it refers to the intended user of at least some of the identified goods, and therefore, the term is unregistrable matter absent a disclaimer.  See attached evidence; 15 U.S.C. § 1052(e)(1); TMEP §§ 1213, 1213.03(a). 

Merely descriptive terms are unregistrable under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), and, therefore, are subject to disclaimer if the mark is otherwise registrable. It is well‑established that a “term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services.”  In re Litehouse Inc., 82 U.S.P.Q.2d 1471, 1472 (TTAB 2007) (citing In re Gyulay, 820 F.2d 1216, 3 U.S.P.Q.2d 1009 (Fed. Cir. 1987); In re Abcor Dev. Corp, 588 F.2d 811, 200 U.S.P.Q. 215 (C.C.P.A. 1978)).

Terms that describe an intended user of a product or service may be merely descriptive. E.g., In re Planalytics, Inc., 70 U.S.P.Q.2d 1453, 1454 (TTAB 2004) (holding “GASBUYER” merely descriptive of intended user of risk management services in the pricing and purchasing natural gas field); see, e.g., In re Camel Mfg. Co., 222 U.S.P.Q. 1031 (TTAB 1984) (holding “MOUNTAIN CAMPER” merely descriptive of intended users of retail and mail order services in the outdoor equipment and apparel field); see TMEP § 1209.03(i).

For this reason, Applicant must submit the following disclaimer statement:

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

15 U.S.C. §§ 1052(e)(1), 1056; TMEP §§ 1213, 1213.03(a), 1213.08(a)(i).

No applicant may claim exclusive rights to terms that others may need to use to describe goods and services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 U.S.P.Q.2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 U.S.P.Q. 823, 825 (TTAB 1983).  Complying with this requirement does not affect the appearance of the asserted mark; in other words, entering a disclaimer statement for the term does not physically remove the term from the asserted mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 U.S.P.Q. 433, 433 (C.C.P.A. 1965); TMEP § 1213. 

If Applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP § 1213.01(b).

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

TEAS PLUS OR TEAS REDUCED FEE (RF) APPLICANT ADVISORY

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.  

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62(a), 2.65(a); TMEP §§ 711, 718.03.  Otherwise, this application will be abandoned.  37 C.F.R. § 2.65(a). 

How to respond:  Click to file a response to this non-final Office action.

Please contact the undersigned attorney with any additional questions. 

Sincerely,

/Judy Helfman/

Judith M. Helfman

Attorney at Law

Law Office 111

571/272-5892

judy.helfman@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 respond timely.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If an 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 an 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.

 

On August 3, 2019, changes to the federal trademark regulations will become effective that require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 31, 2019 for

U.S. Trademark Application Serial No. 88422882

 

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. 

 

 

/Judy Helfman/

Judith M. Helfman

Attorney at Law

Law Office 111

571/272-5892

judy.helfman@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 July 31, 2019, 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.”