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:  December 17, 2020

 

INTRODUCTION: This Office action is supplemental to and supersedes the previous Office action issued on August 12, 2020 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new:  representative specimens required – response required and mark significance inquiry.  See TMEP §§706, 711.02.  Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: mark description, color claim amended, request for information.  See TMEP §§713.02, 714.04. 

 

Maintained and Continued: Specimen Refusal. Specimen illegible - registration is refused because the specimen in International Class 14 is illegible and does not show the applied-for mark as actually used in commerce.

 

The following is a SUMMARY OF ISSUES that applicant must address:

• NEW ISSUE: Representative Specimens Required – Response Required
• NEW ISSUE:  Request for Information – Response Required

 

Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

REPRESENTATIVE SPECIMENS REQUIRED

Applicant has applied for a multitude of goods in International Class 14.  If an identification is so broad that it encompasses a wide range of products, the applicant must submit evidence that it actually uses the mark on a wide range of products to obtain registration.  See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976); 37 CFR 2.61(b); TMEP §§904.01(a) and 1402.03.

 

Applicant must submit a proper specimen for each of the following groups of goods:

1. Bracelets
2. Clocks
3. Cufflinks
4.  Earrings
5. Gems
6.  Jewelry
7.  Lockets
8. Pendants
9.  Wristwatches
10.  Jewellery charms
11.  Jewelry chains
12.  Jewelry findings
13.  Necklaces

 

These specimens must be supported by a declaration.

 

Please note that applicant should delete all identifications of goods pertaining to goods that are not yet in use in commerce.

 

If applicant cannot submit proper specimens for the goods subject to this requirement, applicant may amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fees and filing requirements such as providing a specimen.  For an overview of this response option and instructions on how to satisfy this option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

STATEMENT REQUIRED – SIGNIFICANCE OF WORDING IN THE MARK

Due to the descriptive nature of the applied-for mark, applicant must provide the following information and documentation regarding the goods and/or services and wording appearing in the mark: 

 

(1)       Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application,

including any materials using the terms in the applied-for mark.  Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.; 

 

(2)       Explain how the Applicant is using the mark on “bracelets, earrings, gems, jewelry, jewellery charms, jewelry chains.”

 

(3)    Provide examples of the mark being used in connection with Applicant’s goods for “bracelets, earrings, gems, jewelry, jewellery charms, jewelry chains.”

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.

 

Failure to comply with a request for information is grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651 (citing In re Cheezwhse.com, Inc., 85 USPQ2d at 1919; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814).  Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

RESPONSE GUIDELINES

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

 

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

 

/Cristel John/

Trademark Examining Attorney

Law Office 125

(571) 272-5412

cristel.john@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 December 17, 2020 for

U.S. Trademark Application Serial No. 90040634

 

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. 

 

 

Cristel John

/Cristel John/

Trademark Examining Attorney

Law Office 125

(571) 272-5412

cristel.john@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 December 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.”