To: | 2253 Apparel, Inc. (elipetel@yahoo.com) |
Subject: | U.S. Trademark Application Serial No. 88613717 - GIRLISH - N/A |
Sent: | November 01, 2019 12:06:55 PM |
Sent As: | ecom103@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88613717
Mark: GIRLISH
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Correspondence Address:
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Applicant: 2253 Apparel, Inc.
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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: November 01, 2019
Introduction:
Search of Office’s Database of 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).
Summary of Issues:
Section 2(e)(1) Refusal – Merely Descriptive:
Registration is refused because the applied-for mark merely describes a characteristic, purpose or intended audience 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 applied-for mark is “GIRLISH” (standard characters) for “Denim jackets; Denim pants; Denims; Dresses; Hats; Jackets; Jeans; Pants; Pants for Girls; Shirts; Shoes; Shorts; Skirts; T-shirts; Blue jeans; Denim jeans; Jeggings, namely, pants that are partially jeans and partially leggings; Sweat pants” in International Class 025.
Here, the attached dictionary definition from Merriam-Webster demonstrates that “GIRLISH” means “of, relating to, or having the characteristics of a girl or girlhood”. See attached dictionary definition at http://www.merriam-webster.com/dictionary/girlish. In addition, the term “GIRLISH” is encompassed in applicant’s identification of goods: “Pants for Girls” (emphasis added). See application of record. By using language e that encompasses this term in the identification of goods, the applicant has recognized that these terms are the common commercial or generic name of these services generally understood by the average consumers in the United States. See TMEP §1402.01.
Therefore, “GIRLISH” would be perceived as a characteristic, purpose or intended audience of applicant’s goods, i.e., applicant’s various clothing goods relating to girls and intended for girls.
Furthermore, the trademark examining attorney has attached additional Internet evidence of third parties using the term “GIRLISH” to refer to clothing for girls. Specifically: Etsy, Zazzle, Red Bubble, and FlipKart have multiple entries using the term “GIRLISH” to describe clothing goods; and Zazzle has a category of clothing for “Women’s Girlish Clothing” (emphasis added). See attached Internet evidence.
All of the evidence demonstrates that applicant’s mark “GIRLISH” is descriptive of a characteristic, purpose or intended audience of applicant’s goods, i.e., applicant’s various clothing goods relating to girls and intended for girls.
Accordingly, the proposed mark is merely descriptive and registration is refused on the Principal Register.
Amendment to Supplemental Register Not Permitted Until Acceptable AAU Filed - Advisory
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Benefits of Supplemental Register:
(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).
Applicant May Wish to Seek Trademark Counsel:
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
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.
Assistance or Response Options:
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
/Anna Oakes/
Anna J. Oakes
Examining Attorney
Law Office 103
(571) 272-2569
aoakes1@uspto.gov
RESPONSE GUIDANCE