To: | Samsung Electronics Co., Ltd. (nyustmp@ladas.com) |
Subject: | U.S. Trademark Application Serial No. 88540400 - BESPOKE - 1T19718010 |
Sent: | September 30, 2019 03:09:06 PM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88540400
Mark: BESPOKE
|
|
Correspondence Address: |
|
Applicant: Samsung Electronics Co., Ltd.
|
|
Reference/Docket No. 1T19718010
Correspondence Email Address: |
|
COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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. 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 30, 2019
USPTO database searched; no conflicting marks found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
ISSUES APPLICANT MUST ADDRESS: On September 24, 2019, the trademark examining attorney and Christine Sun discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
Applicant has agreed to comply with the following stated requirements:
I. SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
The applicant has applied to register “BESPOKE” (standard character) in connection with:
Class 7: Robotic vacuum cleaners; Dish washing machines for household purposes; Washing machines for household purposes; Vacuum cleaners; Vacuum cleaner bags; Outdoor condensers, namely, outdoor air condensers for air conditioners
Class 11: LED lamps; LED light bulbs; Electric clothes management apparatus in the nature of garment steamers for household purposes; Electric clothes management machines for drying clothes for household purposes; Electric clothes purifiers for household purposes; Electric cooking ovens for household purposes; Dehumidifiers for household use; Air purifiers; Filters for air purifiers; Electric fans; Air conditioners; Electric refrigerators; Electric ranges; Electric laundry dryers; Microwave ovens; Apparatus for cooking, namely, cooktops
The definition of “bespoke” is “custom-made.” See attached evidence from Merriam-Webster dictionary. The attached evidence from the applicant’s website shows its appliances are custom-made for its consumers. Because the applicant’s goods are custom-made for its consumers, “BESPOKE” merely describes a feature of the applicant’s goods. Therefore, the applicant’s proposed mark is refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act.
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods and/or services, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
II. REQUIREMENT TO AMEND THE IDENTIFICATION OF GOODS
Class 7
Class 7 is sufficient as written.
Class 11
Applicant may substitute the following wording, if accurate (suggestion are bold):
Class 11: LED lamps; LED light bulbs; Electric clothes
management apparatus in the nature of garment steamers for household purposes; Electric clothes management machines for drying clothes for household purposes; Electric clothes
purifiers for household purposes; Electric cooking ovens for household purposes; Dehumidifiers for household use; Air purifiers; Filters for air purifiers; Electric fans; Air conditioners;
Electric refrigerators; Electric ranges; Electric laundry dryers; Microwave ovens; Apparatus for cooking, namely, cooktops
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
ATTORNEY INFORMATION
The attorney bar number has been provided. 37 C.F.R. §2.17(b)(3).
The attorney has agreed to the following attestation: “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).” 37 C.F.R. §2.17(b)(3).
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.
/Ryan Cianci/
Trademark Attorney
Law Office 116
571-270-3721
ryan.cianci@uspto.gov
RESPONSE GUIDANCE