Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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:  August 20, 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.

 

However, applicant must respond to the requirements set forth below.

 

SUMMARY OF ISSUES:

 

• Identification of Services – Partially Too Broad
• Disclaimer Requirement (of COLLECTIONS)
• Entity Type – Clarification Required

 

IDENTIFICATION OF SERVICES

 

The identification for “Retail discount store services in the field of…Accessories” in International Class 35 is too broad and must be clarified because this wording does not make clear the nature of the type of accessory.  Applicant must either (1) specify the common commercial or generic name for each accessory item, or (2) delete this wording from the identification.  See TMEP §§1402.01, 1402.03(a). 

 

Applicant may adopt the following identification, if accurate (please note that suggested amendments are in bold italics and suggested deletions are in strikethrough):

 

            International Class 35

 

“Retail discount store services in the field of clothing, electronics, handbags, and of accessories in the field of __{indicate field of accessories, e.g., clothing, electronics, etc.}.”

 

OR

 

“Retail discount store services in the field of clothing, electronics, handbags, and accessories thereof.”

 

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.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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

 

Applicant must disclaim the wording “COLLECTIONS” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services.  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). 

 

In the present case, applicant applied for the mark “VANESSA COLLECTIONS” for “Retail discount store services in the field of Clothing, Electronics, Handbags, Accessories.”

 

According to the attached dictionary definition, the term “collections” is defined as “something collected” and “a set of apparel designed for sale usually in a particular season.” See attached evidence.  Thus, the wording COLLECTIONS merely describes a feature or characteristic of applicant’s retails services, namely, that they feature sets of apparel or things collected for sale.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “COLLECTIONS” apart from the mark as shown. 

 

A “disclaimer” is a statement in the application record that an applicant does not claim exclusive rights to an unregistrable component of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.  A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance of the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); TMEP §1213.01(b).

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

ISSUE REGARDING APPLICANT’S ENTITY TYPE

 

The name of an individual person appears in the section of the application intended for the trademark owner’s name; however, the legal entity is set forth as a limited liability company.  Applicant must clarify this inconsistency.  See 37 C.F.R. §§2.32(a)(2), (a)(3)(i)-(ii), 2.61(b); TMEP §803.02(a). 

 

If applicant is an individual, applicant should simply request that the legal entity be amended to “individual” and must indicate his/her country of citizenship for the record.  37 C.F.R. §2.32(b)(3)(i); TMEP §803.03(a).  Alternatively, if applicant is a limited liability company, applicant must provide the correct name of the limited liability company and the U.S. state or foreign country of incorporation or organization.  37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(h).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration may be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

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RESPONSE GUIDELINES

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

ASSISTANCE

 

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. 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  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. 

 

/Kim L. Parks/

Kimberly L. Parks

Trademark Examining Attorney

Law Office 112

571.272.6129

kimberly.parks@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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 20, 2020 for

U.S. Trademark Application Serial No. 88924102

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Kim L. Parks/

Kimberly L. Parks

Trademark Examining Attorney

Law Office 112

571.272.6129

kimberly.parks@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 20, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”