To: | Santos, Hector (info@giftshoprow.com) |
Subject: | U.S. Trademark Application Serial No. 88508271 - G GIFT SHOP ROW - N/A |
Sent: | September 26, 2019 04:07:11 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88508271
Mark: G GIFT SHOP ROW
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Correspondence Address: |
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Applicant: Santos, Hector
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: September 26, 2019
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.
NO CONFLICTING 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).
COMPLETE MARK DESCRIPTION REQUIRED:
The following description is suggested, if accurate:
The mark consists of the stylized letter “G”. Below this are the words “GIFT SHOP ROW”.
DISCLAIMER OF “GIFT SHOP” REQUIRED:
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 “GIFT SHOP” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. 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).
“Gift shop” means “a store (such as a small store in a museum) that sells things which might be given people as gifts”. See attachments from <http://www.merriam-webster.com/dictionary/gift%20shop>.
GIFT SHOP immediately conveys to consumers that applicant’s services are in the nature of an online store that sells things that might be given to people as gifts. Indeed, applicant’s ID includes the words “online retail store” and “gifts”.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GIFT SHOP” 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.
IDENTIFICATION OF SERVICES:
Class 35 -
In Class 35, applicant’s identification is: “Online retail store featuring Candles, Vases, Statues, Home decor, Kitchen decor, Outdoor decor, Fashion, Clothing, Lighting, Chess sets, Games, Fragrance, Featured brands, Books, Electronics, Novelties, Patio Decor, Garden Decor, Bed and Bath, Accessories, Furniture, Spa Sets, Collections, Music, Movies, Memorabilia, Toys and Gifts.”
The following wording is unacceptable:
The subject matter of “fashion” is indefinite. More specificity is required. See below for suggestion.
The field of “games” is indefinite. The type of games must be stated. See below for suggestion.
“Featured brands” is indefinite. The type of brand products must be stated. See below for suggestion.
The field of “electronics” is indefinite. The type of electronics must be stated. See below for suggestion.
The field of “novelties” is indefinite. The type of novelties must be stated. See below for suggestion.
The field of “bed and bath” is indefinite. More specificity is required. See below for suggestion.
“Accessories” is indefinite. The type of accessories must be stated. See below for suggestion.
“Collections” is indefinite. The type of collections must be stated. See below for suggestion.
“Memorabilia” is indefinite. The type of memorabilia must be stated. See below for suggestion.
Taking the above together, applicant may adopt the following:
Class 35: Online retail store featuring Candles, Vases, Statues, Home decor, Kitchen decor, Outdoor decor, fashion jewelry, Clothing, Lighting, Chess sets, board games, Fragrance, branded products in the nature of consumer electronics, Books, novelty buttons, Patio Decor, Garden Decor, bed and bath accessories, Furniture, Spa Sets, stamp collections, Music, Movies, sports memorabilia, Toys, and Gifts
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.
ENTITY INDEFINITE – NAME OF INDIVIDUAL APPLICANT BUT LEGAL ENTITY IS LLC:
If applicant is an individual, applicant should simply request that the legal entity be amended to “individual” and must indicate his/her country of citizenship for the record. TMEP §803.03(a). Alternatively, if applicant is a limited liability company, applicant must provide the correct name of the limited liability company and the U.S. state or foreign country of incorporation or organization. TMEP §803.03(h).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration may be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
UNACCEPTABLE SPECIMEN – MARK ONLY:
Registration is refused because the specimen in International Class 35 is merely a photocopy of the drawing or a picture or rendering of the applied-for mark, and thus fails to show the applied-for mark in use in commerce with the services for each international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Chica, 84 USPQ2d 1845, 1848 (TTAB 2007); TMEP §§904, 904.07(a), 1301.04(g)(i). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
How to respond. Click to file a response to this nonfinal Office action
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@uspto.gov
RESPONSE GUIDANCE