To: | Set Design Apparel (info@setdesignapparel.com) |
Subject: | U.S. Trademark Application Serial No. 88807247 - SET LIFE - N/A |
Sent: | May 13, 2020 11:04:37 AM |
Sent As: | ecom123@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88807247
Mark: SET LIFE
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Correspondence Address:
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Applicant: Set Design Apparel
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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: May 13, 2020
INTRODUCTION
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.
The applicant must address:
Also contained herein is an advisory regarding a potential Section 2(d) Refusal for a likelihood of confusion with a prior pending application, an advisory regarding multiple class application requirements and an advisory regarding hiring an attorney
POTENTIAL SECTION 2(d) REFUSAL - PRIOR-FILED APPLICATION
The filing date of pending U.S. Application Serial No. 87551306 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Although the applicant is not required to respond to the issue of the prior pending application(s), the applicant must respond to the below refusal and requirement within six months of the mailing date of this Office action to avoid abandonment.
SPECIMEN REFUSAL
Webpage specimen does not include required date accessed. Registration is refused because the specimen is not acceptable as a webpage specimen; it lacks the required date accessed. See 37 C.F.R. §2.56(c); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at V.B. (Rev. Feb. 2020). The specimen thus appears to be in the nature of a digital mockup that fails to show the applied-for mark in actual use in commerce. See Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.03(g), 904.07(a). An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and 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).
A webpage submitted as a specimen must include the URL and access or print date to show actual use in commerce. 37 C.F.R. §2.56(c). Because the webpage specimen lacks the associated access date on it, within the TEAS form used to submit the specimen, or in a verified statement in a later-filed response, it is unacceptable to show use of the mark in commerce.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a verified statement, in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746, specifying the URL of the original webpage specimen and the date it was accessed or printed.
(2) Submit a different specimen (a verified “substitute” specimen), including the URL and date accessed/printed on it, 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. Applicant must also submit 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.”
(3) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
AMENDMENT OF THE IDENTIFICATION OF GOODS REQUIRED
If applicant’s “Clothing incorporating LEDs, namely, babies, adults, children, women, men” is in International Class 25, applicant may amend the identification to list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses) after the word “namely” and insert the word “for” after the list of goods, right before the listing of “babies, adults, children, women, men”.
Applicant may adopt the following identification in International Class 25, if accurate (additions are shown in bold and italics):
Class 9: Clothing incorporating LEDs, namely, clothing for protection against accidents for babies, adults, children, women, men
Class 25: Clothing for athletic use, namely, padded shirts; Clothing incorporating LEDs, namely, {insert the specific type of clothing, e.g., shirts, sweaters, pants, dresses, shorts} for babies, adults, children, women, men; Clothing, namely, arm warmers; Clothing, namely, base layers; Graphic T-shirts; Hats; Leggings; Rain coats; Shirts; Shirts and short-sleeved shirts; Socks; Belts; Body suits for babies, adults, children, women, men; Bottoms as clothing; Camouflage shirts; Coats for babies, adults, children, women, men; Dance slippers; Gym pants; Headwear for babies, adults, children, women, men; Hooded sweatshirts for babies, adults, children, women, men; Hoodies; Hoods; Jackets; Jackets for babies, adults, children, women, men; Jerseys; Outer jackets; Over shirts; Pajamas for babies, adults, children, women, men; Pants for babies, adults, children, women, men; Scarfs; Shirts for babies, adults, children, women, men; Shoes for babies, adults, children, women, men; Shorts for babies, adults, children, women, men; Sweaters for babies, adults, children, women, men; Sweatpants for babies, adults, children, women, men; T-shirts for babies, adults, children, women, men; Ties as clothing; Tights; Tops as clothing; Trousers for babies, adults, children, women, men; Women's clothing, namely, shirts, dresses, skirts, blouses; Woven shirts for babies, adults, children, women, men; Wristbands as clothing; Yoga pants
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.
CLARIFICATION OF THE NUMBER OF CLASSES FOR
WHICH REGISTRATION IS SOUGHT REQUIRED
The applicant has identified goods that could be classified in at least two (2) classes. However, the applicant submitted a fee sufficient for only one class. Applicant must either submit the filing fees for the class not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY
The application references goods based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is not acceptable for any international class. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
The fee for adding classes to a TEAS Plus application is $225 per class. See 37 C.F.R. §2.6(a)(1)(iv); TMEP §§819.03, 819.04. For more information about adding classes to an application, see the Multiple-class Application webpage.
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
HIRING AN ATTORNEY ADVISORY
Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this 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.
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.
/Sarah C. Hopkins/
Sarah Hopkins
Examining Attorney
Trademark Office 123
(571) 270-0942
sarah.hopkins@uspto.gov
RESPONSE GUIDANCE