To: | Client Giant, Inc. (dhahn@sycr.com) |
Subject: | U.S. Trademark Application Serial No. 88519983 - CLIENT GIANT - 105812-0000 |
Sent: | October 06, 2019 08:18:18 PM |
Sent As: | ecom124@uspto.gov |
Attachments: | Attachment - 1 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88519983
Mark: CLIENT GIANT
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Correspondence Address: STRADLING YOCCA CARLSON & RAUTH 660 NEWPORT CENTER DRIVE, SUITE 1600
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Applicant: Client Giant, Inc.
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Reference/Docket No. 105812-0000
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: October 06, 2019
SEARCH RESULTS
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).
Specimen Does Not Show Use with Services
this refusal applies to international class 35 only
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 35. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).
Specifically, applicant’s services in Class 35 are “providing consumer information and advice in the choice of products and services” However, the website specimen shows services that packages of gifts and services that businesses can purchase for their clients. Nothing on the website provides information or advice about choice of product. Accordingly, the specimen does not show use with the services in International Class 35.
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 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.
In this case, applicant must disclaim “CLIENT” because it is not inherently distinctive. These unregistrable term(s) 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).
The attached evidence from American Heritage Dictionary shows this wording means “the party for which professional services are rendered.” Additionally, applicant’s specimen shows that its services are provided to its consumers’ clients, e.g., “Client Giant exists to deliver remarkable experiences to your clients . . . .” Thus, the wording merely describes applicant’s services because the services are provided for clients.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CLIENT” 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.
THIS REQUIREMENT APPLIES TO INTERNATIONAL CLASSES 35 AND 42 ONLY
The identification of services must be amended because some of the wording is indefinite.
Applicant may substitute the following wording, if accurate: “Provision of online non-downloadable software . . . .”
To address the issues discussed above, applicant may adopt any or all of the following identification of services, if accurate. Suggested changes are indicated in bold, strikethrough, and underlined fonts.
International Class 35: Customer care concierge support services, namely,
providing consumer commercial information and advice for consumers in the choice of products and services.
International Class 42: Provision of online non-downloadable software application for use in providing customer care concierge support services, namely, providing consumer information and advice in the choice of products and services; Provision of online non-downloadable software application for use in providing personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs, for use in providing concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs.
International Class 45: Personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs; Concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs.
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.
Responding to this Office Action
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
/April Reeves/
April E. Reeves
Examining Attorney
Law Office 124
(571) 272-3681
april.reeves@uspto.gov
RESPONSE GUIDANCE