To: | Nimesh Patel (jannet@latan.com) |
Subject: | U.S. Trademark Application Serial No. 88728704 - ACE OF CLUBS OUD EMPIRE - N/A |
Sent: | June 04, 2020 01:36:34 PM |
Sent As: | ecom125@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 |
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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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: June 04, 2020
This Office action follows applicant’s response filed on May 12, 2020.
In an Office action dated January 27, 2020, the examining attorney noted applicant was required to amend the mark description, provide a disclaimer, and amend the identification to avoid a deceptiveness refusal. See TMEP §§713.02, 714.04. The applicant has provided a disclaimer, but did not satisfy the identification and mark description requirements.
Accordingly, a deceptiveness refusal and information request pertaining to the mark must issue. The mark description and amend identification requirements are also hereby maintained and continued.
NEW ISSUE: SECTION 2(a) REFUSAL – DECEPTIVENESS REFUSAL
Registration is refused because the applied-for mark consists of or includes deceptive matter in relation to the identified goods. Trademark Act Section 2(a), 15 U.S.C. §1052(a).
A term is deceptive when all three of the following criteria are met:
(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
(3) If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?
In re Tapco Int’l Corp., 122 USPQ2d 1369, 1371 (TTAB 2017) (citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)); TMEP §1203.02(b); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).
In this case, applicant’s mark includes the wording “OUD”, indicating that the goods have or exhibit the following feature or characteristic: OUD. However, according to the evidence of record, applicant’s goods do not in fact have or exhibit this feature or characteristic.
Consumers would be likely to believe this misdescription in the mark, because the attached evidence from Alpha Aromatics, FashionBeans, and IDiva shows that it is common in applicant’s industry for such goods to include OUD, and consumers have come to expect such feature or characteristic. Specifically, this evidence shows that OUD refers to an expensive fragrance ingredient that comes from rare wood, and that the oil from such wood is sometimes deemed more expensive than gold. The examining attorney hereby incorporates by reference the evidence presented in the January 27, 2020 Office action from Demeter and LiveAboutDotCom showing that OUD is an expensive and desirable perfume ingredient.
A misdescriptive feature or characteristic would be material to the purchasing decision of a significant portion of the relevant consumers when the evidence demonstrates that the misdescription would make the product or service more appealing or desirable to prospective purchasers. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992)); TMEP §1203.02(d).
In the present case, the aforementioned shows that the misdescriptive feature or characteristic, namely OUD, renders the goods more appealing or desirable because it is a rare ingredient.
Thus, the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods.
Accordingly, registration of the applied-for mark is hereby refused under Section 2(a) of the Trademark Act.
NEW ISSUE: REQUEST FOR INFORMATION
(1) A written statement explaining whether the goods do or will contain OUD.
(2) A sample of advertisements or promotional materials featuring the goods, or if such materials are not available, applicant must submit samples of advertisements or promotional materials.
(3) A written statement describing in detail the nature, purpose, and channels of trade of the good.
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant website information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Applicant is advised that, if applicant’s response to the request for information indicates that the goods identified in the application do not or will not contain oud, registration may be refused on the ground that the applied-for mark is deceptive. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Budge Mfg. Co., 857 F.2d 773, 775-77, 8 USPQ2d 1259, 1260-62 (Fed. Cir. 1988); In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1010 (TTAB 2006); TMEP §1203.02-02(e).
MAINTAINED AND CONTINUED: 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 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.
MAINTAINED AND CONTINUED: MARK DESCRIPTION REQUIREMENT
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”.
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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Cuello, Gidette
/Gidette Cuello/
Trademark Examining Attorney
Law Office 125
(571)272-1122
gidette.cuello@uspto.gov
RESPONSE GUIDANCE