To: | Brooks Brothers Group, Inc. (nyctrademarks@bakermckenzie.com) |
Subject: | U.S. Trademark Application Serial No. 88610062 - BLACK FLEECE BY BROOKS BROTHERS - N/A |
Sent: | December 10, 2019 03:26:32 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88610062
Mark: BLACK FLEECE BY BROOKS BROTHERS
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Correspondence Address:
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Applicant: Brooks Brothers Group, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: December 10, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES
· Disclaimer or 2(f) in Part Claim Required
· Identification Requirements
Disclaimer or 2(f) in Part Claim Required
In this case, applicant must disclaim the wording “BLACK FLEECE” because it is not inherently distinctive. This unregistrable terms is descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods that is both false and believable. See 15 U.S.C. §§1052(e)(1); In re White Jasmine LLC, 106 USPQ2d 1385, 1394-95 (TTAB 2013); TMEP §§1209.04, 1213.03(a).
The attached evidence from American Heritage Dictionary shows that “BLACK” means “Being of the color black, producing or reflecting comparatively little light and having no predominant hue” and “FLEECE” means “The coat of wool of a sheep or similar animal” These words together describe wool that is the color black. This wording is commonly used with clothing, such as that applicant has identified, to describe clothes made of or containing black fleece. However, the specified goods do not contain “black fleece” as stated in the identification of goods. Consumers would be otherwise likely to believe that the clothing goods contain black fleece as this is a common feature of clothing, as shown in the attached evidence from Old Navy, REI, and the North Face.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BLACK FLEECE” 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.
Alternately, applicant may submit a claim of acquired distinctiveness as to “BLACK FLEECE” under section 2(f). The application record indicates that applicant has used its mark for a long time; therefore, applicant has the option to amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f). See 15 U.S.C. §1052(f); TMEP §1212.05.
To amend the application to Section 2(f) based on five years’ use and the prior registration number 4352429, applicant should request that the application be amended to assert a claim of acquired distinctiveness under Section 2(f) and submit the following written statement claiming acquired distinctiveness, if accurate:
The wording “BLACK FLEECE” has become distinctive of the goods through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.
TMEP §1212.05(d); see 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a)(2); TMEP §1212.08. This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.41(a)(2); TMEP §1212.05(d); see 37 C.F.R. §2.193(e)(1).
IDENTIFICATION REQUIREMENT
Applicant has identified the following goods:
Class 25: Belts; Blouses; Boots; Bottoms; Coats; Dresses; Evening dresses; Gloves; Hats; Hosiery; Jackets; Mufflers; Neckties; Pants; Rainwear; Scarves; Shirts; Shoes; Shorts; Skirts; Socks; Suits; Suspenders; Sweaters; Ties; Tops; Trousers, none of the forgoing include goods made from black fleece fabric
Applicant must clarify the nature of the goods in the identifications for “Tops,” “Bottoms,” “Ties,” and “Mufflers.” Applicant must clarify that these goods are types of clothing and that the mufflers are a variety of neck scarves; other goods of different natures exist under these same names and would need to be classified outside the current class. However, the current evidence and context suggests that applicant’s goods are limited to proper Class 25 clothing. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should simply adopt the amended language as shown below.
Applicant must also correct the punctuation in the identification to clarify the individual items in the list of goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a). Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity. In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language underlined for clarity:
Class 25: Belts; Blouses; Boots; Bottoms as clothing; Coats; Dresses; Evening dresses; Gloves; Hats; Hosiery; Jackets; Mufflers as neck scarves; Neckties; Pants; Rainwear; Scarves; Shirts; Shoes; Shorts; Skirts; Socks; Suits; Suspenders; Sweaters; Ties as clothing; Tops as clothing; Trousers; none of the forgoing include goods made from black fleece fabric
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.
RESPONSE AND ASSISTANCE
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. 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.
/Kimberly M. Ray/
Examining Attorney
Law Office 122
(571) 272-7834
Kimberly.Ray@uspto.gov
RESPONSE GUIDANCE