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:  June 25, 2021

 

This Office action is supplemental to and supersedes the previous Office action issued on December 8, 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 refusal:  insufficient Section 2(f) claim.  See TMEP §§706, 711.02. 

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied:  applicant amended the identification of goods to avoid deceptiveness, applicant provided a disclaimer for AMETHYST, and amended the mark description.  See TMEP §713.02. 

 

In addition, the prior pending application has abandoned, thus the pending issue is withdrawn.  See id. 

 

However, the disclaimer requirement for PREMIER COLLECTION is continued and maintained.

 

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

 

• Section 2(f) Claim Insufficient

 

Applicant must respond to all issues raised in this Office action and the previous December 8, 2020 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).

 

SECTION 2(f) INSUFFICIENT

 

Applicant asserted a claim of acquired distinctiveness under Trademark Act Section 2(f) based on applicant’s use of the mark in commerce with applicant’s goods and/or services for five years prior to filing the application.  See 15 U.S.C. §1052(f).  However, the application indicates that the mark is not currently in use but will be used by applicant in the future.  Thus, applicant needs to clarify whether applicant intends to claim acquired distinctiveness in his or her application or if applicant inadvertently included this claim of five years’ use.  See 37 C.F.R. §2.61(b); TMEP §814. 

 

If applicant intends to maintain this claim, applicant must satisfy the requirements specified in the following paragraph.  See TMEP §1212.09(a)-(b).  If applicant does not intend to maintain this claim, applicant should request the Section 2(f) claim be deleted from the application.  See TMEP §1212.09(a).

 

An intent-to-use applicant who has used the same mark on related goods and/or services may assert a claim of acquired distinctiveness under Section 2(f) before filing an allegation of use, if applicant can establish that, as a result of applicant’s use of the same mark on other goods and/or services, the mark has become distinctive of the goods and/or services in the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and/or services in the intent-to-use application when use in commerce begins.  In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001); In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009); TMEP §1212.09(a).

 

Failure to comply with this request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814. 

 

In addition, applicant may not base its claim of acquired distinctiveness under Trademark Act Section 2(f) on U.S. Registration Number 4890693 for PREMIER COLLECTION.  An applicant may not base a claim of acquired distinctiveness under Trademark Act Section 2(f) on ownership of a registration on the Supplemental Register.  37 C.F.R. §2.41(a)(1); In re Canron, Inc., 219 USPQ 820, 822 n.2 (TTAB 1983); TMEP §1212.04(d).

 

Lastly, applicant claim of acquired distinctiveness only applies to a portion of the mark.  Thus, a claim of Section 2(f) in part as to PREMIER COLLECTION would be appropriate and necessary in this case.   

 

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.

 

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

 

 

/Marcya N. Betts/

/Marcya N. Betts/

Examining Attorney

Law Office 106

(571) 272-4913

Marcya.Betts@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 June 25, 2021 for

U.S. Trademark Application Serial No. 90097980

 

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. 

 

 

/Marcya N. Betts/

/Marcya N. Betts/

Examining Attorney

Law Office 106

(571) 272-4913

Marcya.Betts@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 June 25, 2021, 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.”