NOTE TO THE FILE
Sent to TICRS as Serial Number: 88599725SERIAL NUMBER: 88599725
DATE: 12/09/2019
NAME: rnkojo
NOTE:
Searched:
X Google
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
X Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:Examining Attorney Nkojo,
We authorize both your suggested disclaimer and the correction of the Owner's name by Examiner's Amendment. We thank you for your kind assistance on this matter.
Please contact us if further issues remain.
Respectfully submitted,
/John R. Mugno/
LAW OFFICES OF JOHN R. MUGNO
The Woolworth Building
233 Broadway - Suite 2348
New York, New York 10279
Telephone: (212) 925-3474
In a message dated 12/6/2019 6:28:41 PM Eastern Standard Time, Rhoda.Nkojo@USPTO.GOV writes:
Dear Mr. Mugno:
This message concerns the above-referenced trademark application for the mark “PRETTY PETITES”, Ser. No. 88599725.
Thank you for the above-referenced application to the U.S. Patent and Trademark Office. I am the trademark examining attorney assigned to review your client’s application and, based on my review, there are a few minor issues that we can resolve via Examiner’s Amendment and then I can approve the mark for publication right away. If you would like to discuss the below via telephone, I am available to do so Monday, December 9, 2019, between 11am and 5pm EST.
REQUIREMENT – DISCLAIMER
Applicant must provide a disclaimer of the unregistrable part(s) 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 “PETITES” 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 wording “PETITES” means “small in size or scope; tiny.” See http://ahdictionary.com/word/search.html?q=petites. In its identification, applicant indicates that its goods are jewelry. Furthermore, applicant should note the following website links from members of the relevant jewelry industry that demonstrate common usage of the term “PETITE”, or plural thereof, in connection with similar goods to describe the small size of the goods. See http://www.bluenile.com/jewelry/petite-jewelry (BLUE NILE providing “Petite Jewelry, Whether a delicate diamond ring or a mini pendant, our petite jewelry collection is fit for everyday style”); http://aliceorjewellery.com.au/products/petite-diamond-necklace (ALICE OR JEWELLERY “Petite Diamond Necklace,”); http://www.monicavinader.com/us/fiji-friendship-petite-bracelet/fiji-friendship-petite-bracelet-silver-metallica?search (MONICA VINADER “FIJI FRIENDSHIP PETITE BRACELET,”); http://www.judefrances.com/product-category/collections/petites/ (JUDEFRANCES offering tiny/small sized jewelry under the description “Shop all Petites” and describing each item as petite, e.g., “Petite Briolette Charm”, “Petite Bullet Charm”, and “Petite Engraved Circle Necklace”) . Therefore, the wording “PETITES” merely describes a feature and/or characteristic of applicant’s goods, namely, the small size of applicant’s jewelry.
While your client will still have exclusive rights to the entire mark, the Office does not allow applicants to claim exclusive rights to terms that others may need to describe their own services. For example, the owner of “Smith Grocery Store” may not claim exclusive rights to “Grocery Store” because other stores need to use that phrase to describe their own store.
Therefore, please let me know if you agree to the following statement being added to the application record:
No claim is made to the exclusive right to use “PETITES” apart from the mark as shown.
ADVISORY – MISSPELLING IN OWNER NAME
The application indicates that the owner of the mark is “Sandeep Diamond Corporaton”. Given applicant’s stated entity type, i.e., Corporation, the wording “Corporaton” appears to be an inadvertent misspelling. Please confirm whether such wording requires correction.
RESPONSE GUIDELINES
If the above-referenced disclaimer statement and clarification of the Owner name are acceptable to you I can make the changes myself with an “Examiner’s Amendment”. I would simply need approval by email or telephone at the number below, from you, the authorized attorney of record for the applicant, Sandeep Diamond Corporaton.
If, however, you would like to discuss further, to expedite processing, we can schedule a phone call for anytime Monday, December 9, 2019, between 11am and 5pm EST, to hopefully resolve the issues for immediate approval for publication. You may also respond to this email with your approval or concerns regarding the above-referenced changes to the application record. I will be periodically checking my email over the weekend. I would like to discuss resolution of this issue by close of business Tuesday, December 10th. However if you are unavailable prior to December 10th, then I can issue an Office Action to you and you will have 6 months to respond.
Thank you for your time,
Rhoda
Rhoda Nkojo
Trademark Attorney - Law Office 117
United States Patent & Trademark Office
(PH): (571) 272-8468
Email: rhoda.nkojo@uspto.gov
Please note that although all relevant e-mail communications will be placed in the official application record, an email communication does not constitute a formal response to an office action. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.