To: | Ho T Kevin (Printoramic@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88941490 - PRINTORAMIC DESIGN PRINTS DECOR - N/A |
Sent: | September 01, 2020 04:26:04 PM |
Sent As: | ecom106@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88941490
Mark: PRINTORAMIC DESIGN PRINTS DECOR
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Correspondence Address: 8430 OROSCO WAY, ELK GROVE SACRAMENTO CA
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Applicant: Ho T Kevin
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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: September 01, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
No Conflicting Marks
Summary of Refusals and/or Requirements
The following is a summary of the requirements and/or refusals outlined below to which the applicant must respond.
n Filing basis required
n Requirement to amend the mark description and explain if color is a feature of the mark
n Requirement for a disclaimer
n Requirement to correct the applicant’s address
n Requirement to clarify name and citizenship of applicant
n Requirement to amend the description of services
FILING BASIS
Applicant has not specified a filing basis in the application. An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §§2.32(a)(5), 2.34(a); TMEP §806. Accordingly, applicant must (1) amend the application to specify clearly at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted.
An applicant may add one or more of the following four bases to an application after filing:
(1) Use of the mark in commerce under Trademark Act Section 1(a) – see requirements below;
(2) A bona fide intention to use the mark in commerce under Section 1(b) – see requirements below;
(3) A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or
(4) A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).
Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and/or services. 37 C.F.R. §2.34(b); TMEP §806.02(b).
For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
Requirements for filing under Section 1(b) – intent to use the mark in commerce
For more information about Section 1(b) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
Requirements for filing under Section 1(a) – use of the mark in commerce
To amend an application to one based on use of the mark in commerce under Trademark Act Section 1(a), an applicant must provide the following: (1) a statement that “the mark is in use in commerce and was in use in commerce as of the application filing date;” (2) dates of first use of the mark; (3) a specimen for each class and a statement that “the specimen(s) was in use in commerce at least as early as the application filing date;” and (4) verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of these two statements and the dates of first use. See 37 C.F.R. §2.34(a)(1); TMEP §§903, 904.
For more information about Section 1(a) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
MARK DESCRIPTION
The following description is suggested, if accurate: The mark consists of the stylized word “PRINTORAMIC” above the design of a rectangle design depicting a brush stroke with uneven texture and edges containing the wording “DESIGNS,” “PRINTS” and “DÉCOR” in front of the rectangular design.
Clarify color in the mark
The application states that the mark is not in color, however, the mark description indicates that elements of the mark are in black and white. If color is not claimed as a feature of the mark, then the applicant should not include any color references in the mark description, as noted above.
If black and white are actual features of the mark, then the applicant must submit the following color claim and amended mark description:
Color claim: The colors black and white are claimed as a feature of the mark.
Mark description: The mark consists of the stylized word “PRINTORAMIC” in white outlined in black above the design of a black rectangle design depicting a brush stroke with uneven texture and edges containing the wording “DESIGNS,” “PRINTS” and “DÉCOR” in white in front of the rectangular design.
37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq.
DISCLAIMER
The services include graphic design, design of interior décor and acrylic printing. Therefore, the words DESIGN, DÉCOR and PRINT immediately tell consumers key features of the applicant’s services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “DESIGNS,” “PRINTS” and “DECOR” 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.
ADDRESS
The applicant’s street address is listed as:
8430 Orosco Way, Elk Grove Sacramento CA
Elk Grove, California 95624
The applicant must amend the address to list its street address, city, state and zip code clearly and correctly.
CLARIFY APPLICANT’S NAME AND CITIZENSHIP
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). In that case, the applicant should be listed as:
Kevin T. Ho, an individual and citizen of (indicate country of citizenship)
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). In that case, the applicant should be listed as:
(indicate correct legal name for LLC), a California limited liability company
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).
SERVICES
The applicant must clarify what is meant by “substrates” and how the applicant “custom designs” them for others.
Applicant may substitute the following wording, if accurate. The applicant must provide the information noted in italics:
Class 42: Custom design of (indicate what the applicant custom designs for others, e.g., decorative artwork made of glass, wood, and acrylic, decorative art prints and decorative craft works of art) based on personal selections made by the customer; Design of interior decor; Providing graphic and multimedia design services for the purpose of promoting the goods and services of others
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.
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.
Legal 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.
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.
/Elissa Garber Kon/
Examining Attorney, Law Office 106
phone: 571-272-9181
email: elissagarber.kon@uspto.gov
RESPONSE GUIDANCE