To: | Watkins, Micheal, R (KMG@KMGPrime.com) |
Subject: | U.S. Trademark Application Serial No. 88807353 - KMG KING MICHEAL'S GALLERY - N/A |
Sent: | May 13, 2020 06:36:54 PM |
Sent As: | ecom128@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. 88807353
Mark: KMG KING MICHEAL'S GALLERY
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Correspondence Address:
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Applicant: Watkins, Micheal, R
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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
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 USPTO DATABASE OF MARKS
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
SECTIONS 1 AND 45 SPECIMEN REFUSAL – SUBSTITUTE REQUIRED
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).
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).
Response options. 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 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) (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.
COLOR CLAIM, DESCRIPTION, AND DRAWING – CLARIFICATION REQUIRED
First, the applicant must submit a new drawing with the “®” symbol deleted from the drawing of the mark; this symbol is not part of the mark and is not registrable. See 37 C.F.R. §2.72; TMEP §807.14(a). Although applicant must delete this matter, applicant may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72; TMEP §§807.14 et seq. For more information about deleting matter from the drawing, see the Drawing webpage.
Where the color claim and/or description of the mark and drawing are inconsistent with one another, generally the USPTO looks to the drawing to determine what the mark is. TMEP §807.07(a)(i)-(a)(ii), (c). Additionally, the colors in the drawing, color claim, and description must match. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq.
To clarify the colors in the mark, as well as the mark description, applicant may satisfy one of the following:
(1) Submit a new drawing that shows the mark in black on a white background without the “®” symbol. TMEP §807.07(c). However, any other amendments to the drawing will not be accepted if they would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.
If submitting a mark drawing in black and white, the following description is suggested: “The mark consists of a 5 point crown above the letters “KMG” above a ribbon stretching horizontally to form a loop on either side, above 5 ovals, above the wording “KING MICHAEL’S GALLERY”.”
(2) Submit a new color drawing without the “®” symbol, as well as an amended color claim and description that matches the colors in the drawing. Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested:
Color claim: “The colors black, gold, and white are claimed as a feature of the mark.”
Description: “The mark consists of a 5 point crown with gold points that fade to white appearing above the letters “KMG” in white, above a gold ribbon stretching horizontally to form a loop on either side, above 5 gold ovals, above the wording “KING MICHAEL’S GALLERY” in white, all the aforesaid appearing on a black background.”
For more information about drawings and instructions on how to submit a new color drawing, amended color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
Applicant must disclaim the wording “GALLERY” because it is merely descriptive of the applicant as the provider of the goods identified in the application. 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 shows this wording means “[a]n establishment that displays and sells works of art.” Attachment 1. In turn, the application identifies goods of “Figurines of common metal; Sculptures of metal; Statues of common metal.” Such goods as “sculptures” and “statues” fall squarely within the definition of “GALLERY” immediately above because they are works of art. See, e.g., Attachment (defining a sculpture as “a work of art.” Attachment 2. As such, the use of this term in the application is descriptive because it immediately conveys to consumers the provider of these goods, a seller of works of art.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GALLERY” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
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 §§304.01-304.02, 709.04-709.05.
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.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Jeffrey Oakes/
Trademark Examining Attorney
Law Office 128
U.S. Patent and Trademark Office
(571) 272-8653
Jeffrey.Oakes@uspto.gov
RESPONSE GUIDANCE