To: | GRAÉ Holding LLC (jmeek@mendenfreiman.com) |
Subject: | U.S. Trademark Application Serial No. 88676239 - DOMAINE - 5687.01 |
Sent: | December 09, 2019 07:00:10 PM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88676239
Mark: DOMAINE
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Correspondence Address: 5565 GLENRIDGE CONNECTOR, N.E. STE. 850
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Applicant: GRAÉ Holding LLC
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Reference/Docket No. 5687.01
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 09, 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.
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).
REFUSAL – APPEARS TO BE A DUPLICATE APPLICATION
Registration is refused because this application and U.S. Application Serial No. 88676226 appear to be duplicate applications. 37 C.F.R. §2.48; TMEP §703. See the attached application. The USPTO will not issue duplicate registrations. 37 C.F.R. §2.48; TMEP §703. Applicant may respond to this refusal by abandoning one of them.
Applicant can expressly abandon the application (i.e., withdraw a pending application and end the application process) using the TEAS Request for Express Abandonment (Withdrawal) of Application form. This form must be properly signed by the applicant or, if represented by an authorized attorney, by the applicant’s attorney. See 37 C.F.R. §§2.68(a), 2.193(e)(2); TMEP §§611.03(b), 718.01. Once filed, a request for abandonment may not be withdrawn. 37 C.F.R. §2.68(a).
SPECIMEN UNACCEPTABLE – DOES NOT SHOW MARK USED IN CONNECTION WITH IDENTIFIED SERVICES
Specifically, the specimen shows the mark on what appears to be a Facebook page but it is not used in connection with any of the services identified in the application and it is not clear the nature of the services that the mark is being used with. The second specimen shows an Instagram page but the mark is not on the specimen.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
AMEND MARK DESCRIPTION
Applicant must submit an amended description of the mark that agrees with the mark on the drawing. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The current description is inconsistent with the mark on the drawing and thus is inaccurate. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify only those literal and design elements appearing in the mark. See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d).
The following description is suggested, if accurate: The mark consists of the
stylized wording “DOMAINE” with the sides of the "A" aligned with part of the letter "M" and a titled "I"."A" formed by a triangle centered above an isosceles
trapezoid.
RESPONSE GUIDELINES
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.
HOW TO CONTACT & ASSISTANCE
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.
/Tabitha Messick/
Tabitha L. Messick
Examining Attorney, Law Office 104
571-272-6585
tabitha.messick@uspto.gov
RESPONSE GUIDANCE