To: | Nimesh Patel (jannet@latan.com) |
Subject: | U.S. Trademark Application Serial No. 88728704 - ACE OF CLUBS OUD EMPIRE - N/A |
Sent: | January 27, 2020 03:57:17 PM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88728704
Mark: ACE OF CLUBS OUD EMPIRE
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Correspondence Address:
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Applicant: Nimesh Patel
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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: January 27, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) 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).
MARK DESCRIPTION
Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq. The description of record does not describe the shield, swords, and banner. It also does not describe the wording “OUD EMPIRE”.
The following description is suggested, if accurate: The mark consists of the stylized wording “ACE OF CLUBS” inside of a shield design that features a clubs symbol and sits on top of two swords that cross to intersect in the middle, the swords featuring a banner containing the stylized wording “OUD EMPIRE”.
AMEND THE IDENTIFICATION TO AVOID DECEPTIVENESS
This feature or characteristic is considered desirable for applicant’s goods because the attached evidence shows that it is highly valued by perfumers for its scent. (See attached evidence). However, if some or all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Therefore, applicant may amend the identification to the following, if accurate: Cologne; Fragrances; Perfume; Perfumes; Perfumes and colognes; Eau de perfume; Liquid perfumes; all the foregoing made in whole or significant part of oud
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.
DISCLAIMER REQUIRED
In this case, applicant must disclaim “OUD” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient of applicant’s goods. 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 Liveaboutdotcom and Demeter Fragrance library shows that oud (also known as “oudh”) is a common ingredient in perfumes. Thus, the wording merely describes applicant’s goods because they may indicate that “oud” is an ingredient of applicant’s goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “OUD” 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.
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.
Cuello, Gidette
/Gidette Cuello/
Trademark Examining Attorney
Law Office 125
(571)272-1122
gidette.cuello@uspto.gov
RESPONSE GUIDANCE