United States Patent and Trademark Office (USPTO)

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

 

 

 

COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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 17, 2020

 

PRIORITY ACTION

 

USPTO database searched; no conflicting marks found.  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.

 

Applicant must address issues shown below.  On June 17, 2020, the examining attorney and Avery Audrey Kwan, attorney of record, discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

Summary of Issue(s)

• Disclaimer Requirement

 

Disclaimer Requirement

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

 

The attached Wikipedia® entry for “Storefront” shows that e-commerce websites are sometimes called “online storefronts” or “virtual storefronts.”  Additionally, the attached evidence from applicant’s website shows that “DoorDash Storefront enables pickup and delivery orders directly from your website, powered by DoorDash’s industry-leading platform.”  Here, applicant helps businesses set up an online personalized store with applicant’s e-commerce website features, i.e., a virtual storefront, using applicant’s class 9 software goods, class 35 online ordering services, class 39 delivery services and class 42 software services.

 

Furthermore, the attached evidence from Amazon®, Etsy® and Squarespace® shows that “STOREFRONT” is a commonly-used term in the electronic ordering industry.  For example, Squarespace® states that they are a “great resource that lets you build your [web]site(s) and integrate them with an e-commerce storefront.” Thus, the wording “STOREFRONT” merely describes applicant’s goods and services and must be disclaimed.

 

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

 

No claim is made to the exclusive right to use “STOREFRONT” 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.

 

 

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the goods and services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

Identification of Goods and Services Amended.  The identification of goods and services is amended to read as follows:

 

Class 9:  Downloadable computer software for managing on-line commerce, processing orders, and tracking orders for delivery of goods

 

Class 35:  On-line ordering services in the field of delivery of perishable goods

 

Class 39:  Delivery of goods

 

Class 42:  Providing temporary use of on-line non-downloadable software for managing on-line commerce, processing orders, and tracking orders for delivery of goods

 

See TMEP §§1402.01, 1402.01(e).

 

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

 

 

/Olivia S. Lee/

Olivia S. Lee

Trademark Examining Attorney

Law Office 128

olivia.lee@uspto.gov

(571) 272-6848

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 June 17, 2020 for

U.S. Trademark Application Serial No. 88928126

 

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. 

 

 

/Olivia S. Lee/

Olivia S. Lee

Trademark Examining Attorney

Law Office 128

olivia.lee@uspto.gov

(571) 272-6848

 

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 June 17, 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.”