To: | AdoreMe, Inc. (ipprosecution@orrick.com) |
Subject: | U.S. Trademark Application Serial No. 88636417 - EMBRACE LIFE DISRUPT FASHION - 35348.6013 |
Sent: | December 31, 2019 11:55:43 AM |
Sent As: | ecom114@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88636417
Mark: EMBRACE LIFE DISRUPT FASHION
|
|
Correspondence Address: KRISTIN S. CORNUELLE & CHRIS CIVIL ORRICK, HERRINGTON & SUTCLIFFE LLP
|
|
Applicant: AdoreMe, Inc.
|
|
Reference/Docket No. 35348.6013
Correspondence Email Address: |
|
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 31, 2019
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
1. Amended Identification of Goods Required
2. Disclaimer Required
AMENDED IDENTIFICATION OF GOODS REQUIRED
The wording “activewear” and “boxers” in the identification of goods is indefinite and must be clarified because it fails to identify specific goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “corsets” in the identification is indefinite, too broad and must be clarified because it fails to identify specific goods and could include goods in more than one international class (e.g., abdominal corsets in International Class 010, corsets being clothing in International Class 025). Id.
The wording “moisture-wicking sports bras, tops and bottoms” in the identification is indefinite and must be clarified because it fails to identify specific goods. Id.
Lastly, the wording “stain-resistant, stain-repellant, and menstruation absorbent clothing, namely, undergarments, panties, underpants, underwear, pants and bottoms as clothing” in the identification is indefinite and must be clarified because it fails to identify specific goods. Id.
Applicant may adopt the following wording, if accurate:
§ “Clothing, namely, lingerie, tops, bottoms, bras, bustiers, sports bras, panties, camisoles, sleepwear, loungewear, undergarments, active wear, namely, track suits, athletic shirts and pants, and yoga shirts and pants, swimwear, beachwear, boxers in the nature of boxer briefs and shorts, hosiery, corsets, garters, leotards, leggings, robes, jackets, coats, suits, rainwear, shorts, pants, dresses, skirts, shirts, tank tops, sweatshirts, sweaters, vests, blouses, belts, scarves, gloves, mittens, socks; footwear; headwear; Beach cover-ups; Bras; Chemises; Corsets being clothing; Costumes for use in role-playing games; Costumes for use in the amusement industry; Garter belts; Garters; Halloween costumes; Halloween costumes and masks sold in connection therewith; Hosiery; Knee-high stockings; Leggings; Leotards and tights for women, men and children of nylon, cotton or other textile fibers; Lingerie accessories, namely, removable silicone breast enhancer pads used in a bra; Loungewear; Maternity bras; Maternity lingerie; Nightwear; Nipple covers, namely, pasties; Robes; Shapewear, namely, girdles, bras, panties and leggings; Shoes; Slippers; Sports bra; Sports bras; Stockings; Strapless bras; Swim wear; Swimwear; Underwear; Waist cinchers; Women's athletic tops with built-in bras; Women's clothing, namely, shirts, dresses, skirts, blouses; Hosiery, tights, leggings, and shapewear; moisture-wicking sports bras, tops as clothing and bottoms as clothing; stain-resistant, stain-repellant, and menstruation absorbent clothing, namely, undergarments, panties, underpants, underwear, pants and bottoms as clothing,” in International Class 025.
Note that proposed changes are indicated in bold. Applicant should enter amendments in standard font, not in bold, italics or strikethrough. Furthermore, no braces should be included in applicant’s amended identification. Applicant should also note that the above identification is merely a suggestion and applicant is responsible for providing an accurate and acceptable identification.
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.
Multiple-Class Application Requirements
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “FASHION” 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 Merrian-Webster shows this wording refers to a garment or style of dress. Thus, the wording merely describes a characteristic or purpose of applicant’s goods because applicant provides clothing to be worn as fashion.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “FASHION” 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.
RESPONSE GUIDELINES
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.
/Breanna Freeman/
Examining Attorney
Law Office 114
571-272-7099
breanna.freeman@uspto.gov
RESPONSE GUIDANCE