Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  January 11, 2021

 

This Office action is in response to applicant’s communication filed on December 17, 2020.

 

In the initial Office action issued on June 17, 2020, the examining attorney required amendments to the identification of services, clarification regarding whether the word “MILUNA” in the mark has any meaning in a foreign language, and a properly signed declaration.

 

In its response, the applicant amended the identification of services, provided information concerning the word “MILUNA” in the mark and submitted a signed declaration.  Applicant’s response has been received and made of record.

 

Based on applicant’s response, the requirements for clarification regarding whether “MILUNA” has any meaning in a foreign language and a signed declaration have been SATISFIED.  See TMEP §§713.02, 714.04

 

The requirement for an acceptable identification of services, however, remains unfulfilled.  As such, this requirement is maintained and now made FINAL for the reasons set forth below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

Final: Indefinite Identification of Services

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

By its response, applicant proposes to amend the identification of services to read “Wholesale and retail store services featuring jewelry and costume jewelry in precious and semi-precious metals, namely, necklaces, chains, bracelets, earrings, rings, wedding rings, jewelry sets, anklets, pendants, trinkets, cameos, medals, medallions, amulets, brooches, pins, ornamental pins for hats, tie pins, tie clips, ornaments, precious metal yarns, cuff links, cuff buttons, crystal jewelry items, diamond jewelry, precious metals and their alloys, namely, gold, silver and platinum, pearls, gems, precious, semiprecious and synthetic stones, namely, diamonds, rhinestones, coins, key rings, jewel key rings, jewelry boxes and jewelry boxes of precious metals, figurines and statuettes of precious metals, watchmaking and chronometric instruments, namely, wristwatches, pocket and wall clocks, electric and digital watches, chronographs and watches, chronometers, bracelets and watch bands, watch chains and watch cases; business management assistance in relation to jewelry and horological and chronometric instruments; sales promotion for others in relation to jewelry and horological and chronometric instruments; presentation of goods on communication media for retail store purposes in relation to jewelry and horological and chronometric instruments, namely, providing television home shopping services in the field of jewelry and horological and chronometric instruments; procurement services for others in relation to jewelry and horological and chronometric instruments, namely, purchasing goods and services for other businesses in the nature of jewelry and horological and chronometric instruments; provisiding an on-line marketplace for buyers and sellers of goods and services in relation to jewelry and horological and chronometric instruments; advertising, marketing and promotion services in relation to jewelry and horological and chronometric instruments; marketing service in relation to jewelry and horological and chronometric instruments; providing commercial information and advice for consumers in the choice of products and services in relation to jewelry and horological and chronometric instruments; business advice and information in relation to jewelry and horological and chronometric instruments; business management advisory and assistance services relating to franchising in the field of jewelry and horological and chronometric instruments; consulting and information services and providing technical assistance for the organization and operation of franchising outlets in relation to jewelry and horological and chronometric instruments, including advertising and promotional services related to; commercial administration of the licensing of the goods and services of others in relation to jewelry and horological and chronometric instruments” in International Class 35.

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the services as follows:  “commercial or industrial business management assistance in relation to jewelry and horological and chronometric instruments.”

 

However, the proposed amendment identifies the following services:  “business management assistance in relation to jewelry and horological and chronometric instruments.”  

 

This portion of the proposed amendment is beyond the scope of the original identification because it no longer includes the limiting language “commercial or industrial business management,” which suggests that applicant’s business management services will be provided to commercial or industrial companies.

 

The wording “provisiding an online marketplace” and “marketing service” in the identification of services appears to be misspelled and is thus indefinite; the spelling must be corrected or the wording further clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Applicant may substitute the following wording for the incorrect spelling, if accurate:  “providing” and “marketing services.”

 

The wording “consulting and information services and providing technical assistance for the organization and operation of franchising outlets in relation to jewelry and horological and chronometric instruments, including advertising and promotional services related to” in the identification of services remains indefinite and must be clarified because the specific nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.  Applicant may substitute the following wording, if accurate:  franchising, namely, business management consulting, information and assistance relating to the establishment, organization, operation and promotion of jewelry stores featuring jewelry and horological and chronometric instruments.

 

Applicant may adopt the following identification of services, if accurate [the examining attorney’s suggestions appear in bold, underlined text]:

 

            Class 35:   Wholesale and retail store services featuring jewelry and costume jewelry in precious and semi-precious metals, namely, necklaces, chains, bracelets, earrings, rings, wedding rings, jewelry sets, anklets, pendants, trinkets, cameos, medals, medallions, amulets, brooches, pins, ornamental pins for hats, tie pins, tie clips, ornaments, precious metal yarns, cuff links, cuff buttons, crystal jewelry items, diamond jewelry, precious metals and their alloys, namely, gold, silver and platinum, pearls, gems, precious, semiprecious and synthetic stones, namely, diamonds, rhinestones, coins, key rings, jewel key rings, jewelry boxes and jewelry boxes of precious metals, figurines and statuettes of precious metals, watchmaking and chronometric instruments, namely, wristwatches, pocket and wall clocks, electric and digital watches, chronographs and watches, chronometers, bracelets and watch bands, watch chains and watch cases; business management assistance to commercial or industrial companies in relation to jewelry and horological and chronometric instruments; sales promotion for others in relation to jewelry and horological and chronometric instruments; presentation of goods on communication media for retail store purposes in relation to jewelry and horological and chronometric instruments, namely, providing television home shopping services in the field of jewelry and horological and chronometric instruments; procurement services for others in relation to jewelry and horological and chronometric instruments, namely, purchasing goods and services for other businesses in the nature of jewelry and horological and chronometric instruments; providing an on-line marketplace for buyers and sellers of goods and services in relation to jewelry and horological and chronometric instruments; advertising, marketing and promotion services in relation to jewelry and horological and chronometric instruments; marketing services in relation to jewelry and horological and chronometric instruments; providing commercial information and advice for consumers in the choice of products and services in relation to jewelry and horological and chronometric instruments; business advice and information in relation to jewelry and horological and chronometric instruments; business management advisory and assistance services relating to franchising in the field of jewelry and horological and chronometric instruments; franchising, namely, business management consulting, information and assistance relating to the establishment, organization, operation and promotion of jewelry stores featuring jewelry and horological and chronometric instruments; commercial administration of the licensing of the goods and services of others in relation to jewelry and horological and chronometric instruments

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

ID Manual Online

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.

 

This requirement is maintained and now made FINAL.

 

Proper Response to Final Action

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  business management assistance in relation to jewelry and horological and chronometric instruments; provisiding an on-line marketplace for buyers and sellers of goods and services in relation to jewelry and horological and chronometric instruments; marketing service in relation to jewelry and horological and chronometric instruments; consulting and information services and providing technical assistance for the organization and operation of franchising outlets in relation to jewelry and horological and chronometric instruments, including advertising and promotional services related to.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following services only: 

 

            Class 35:   Wholesale and retail store services featuring jewelry and costume jewelry in precious and semi-precious metals, namely, necklaces, chains, bracelets, earrings, rings, wedding rings, jewelry sets, anklets, pendants, trinkets, cameos, medals, medallions, amulets, brooches, pins, ornamental pins for hats, tie pins, tie clips, ornaments, precious metal yarns, cuff links, cuff buttons, crystal jewelry items, diamond jewelry, precious metals and their alloys, namely, gold, silver and platinum, pearls, gems, precious, semiprecious and synthetic stones, namely, diamonds, rhinestones, coins, key rings, jewel key rings, jewelry boxes and jewelry boxes of precious metals, figurines and statuettes of precious metals, watchmaking and chronometric instruments, namely, wristwatches, pocket and wall clocks, electric and digital watches, chronographs and watches, chronometers, bracelets and watch bands, watch chains and watch cases; sales promotion for others in relation to jewelry and horological and chronometric instruments; presentation of goods on communication media for retail store purposes in relation to jewelry and horological and chronometric instruments, namely, providing television home shopping services in the field of jewelry and horological and chronometric instruments; procurement services for others in relation to jewelry and horological and chronometric instruments, namely, purchasing goods and services for other businesses in the nature of jewelry and horological and chronometric instruments; advertising, marketing and promotion services in relation to jewelry and horological and chronometric instruments; providing commercial information and advice for consumers in the choice of products and services in relation to jewelry and horological and chronometric instruments; business advice and information in relation to jewelry and horological and chronometric instruments; business management advisory and assistance services relating to franchising in the field of jewelry and horological and chronometric instruments; commercial administration of the licensing of the goods and services of others in relation to jewelry and horological and chronometric instruments

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.