United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
NONFINAL 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 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: August 11, 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.
Prior Filed Application May Bar Registration of Applicant’s Mark:
The filing date of pending U.S. Application Serial No. 87273771 in class 14 precedes applicant’s filing
date. See attached referenced application. If the mark in the referenced application 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, upon receipt of applicant’s response to this Office
action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict
between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if
a refusal under Section 2(d) issues.
Consumers are likely to be confused by the use of similar marks on or
in connection with goods and with services featuring or related to those goods. TMEP §1207.01(a)(ii); see In re Detroit
Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various
clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general
merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and
beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to
restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office
furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).
In this instance, the applicant’s services are in the field of jewelry, and the prior filed applicant offers jewelry.
Indefinite Language in Proposed Identification Clause:
The wording “online trading” in the identification of services is indefinite and must be clarified because
the specific nature of such trading services in not stated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may
substitute the following wording, if accurate: conducting online tradeshow exhibitions in the field of jewelry.
The activities identified as “retail services” in International Class
35 are indefinite and must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11.
If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant
should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods
offered through those retail services, e.g., “retail online ordering services featuring jewelry…,” “retail distributorships in the field of jewelry…,” and “retail outlets featuring
jewelry….” See TMEP §§1301.01(a)(ii), 1402.11.
Applicant may adopt the following wording in International Class 35, if accurate: retail store
services in the field of jewelry in precious metals, also containing diamonds, precious stones, semi- precious stones, synthetic stones and pearls .
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.
Applicant may amend the identification to clarify or limit the goods and/or
services, but not to broaden or expand the goods and/or 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).
Clarification of Mark Description:
Applicant must submit an amended description of the mark because the
current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP
§§808 et seq.
The following description is suggested, if accurate: The mark consists of the
word BYOND in stylized lettering; a diamond star design appears in the letter “B” .
Search Results:
The trademark examining attorney has searched the USPTO’s
database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark in a prior-filed pending application may present a bar to
registration of applicant’s mark.
Information Required from U.S. Attorney:
Attorney bar information required. Applicant’s attorney must provide the following bar information: (1) his or her bar membership number, if the bar provides one; (2) the name
of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar. 37 C.F.R. §2.17(b)(3). This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id. If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record. See id.
Attorney attestation required. Applicant’s attorney must provide the following statement: “I attest that I am an attorney who 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). This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id.
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(s) and/or requirement(s) 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.
How to respond. Click to file a response to this nonfinal Office action
/Henry S. Zak/
Henry S. Zak
Examining Attorney, Law Office 119
(571) 272-9354
henry.zak@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.