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:  January 11, 2021

 

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.

 

SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:

 

• Section 2(d) refusal – Likelihood of confusion
• Indefinite identification of goods
• Entity type and citizenship omitted
• Color drawing with color not claimed as a feature of mark – Clarification required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3823205 and 3930472.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

In this case, applicant seeks to register JUNO and design for, among other things, “baby/toddler clothing, baby/children blankets, baby/children sheets” in International Class 10.  The registered marks are:

 

JUNOWEAR for “WOMEN'S CLOTHING, NAMELY, SUPPORT TOPS, BRAS, LEGGINGS, BICYCLE SHORTS, UNDERWEAR” in International Class 25

JUNO for “Women's clothing, namely, pants, shorts, jeans, skirts, dresses, sweaters, knit tops, underwear; outerwear, namely, jackets, coats, skiwear, gloves, and hats; sleepwear, swimwear” in International Class 25

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

Comparison of the Marks

Here, applicant’s mark is JUNO and design.  The registered marks are as follows:

 

• JUNO (in standard characters) – U.S. Registration No. 3930472

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is JUNO and design and registrant’s mark is JUNO.  Thus, the word portions of the marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods.  Id.

 

While applicant’s mark includes a design element, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Therefore, the marks are confusingly similar. 

 

• JUNOWEAR (in standard characters) – U.S. Registration No. 3823205

 

Applicant’s mark creates a similar commercial impression to the registrant’s mark because the marks both contain the term “JUNO.”  Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Moreover, the word “JUNO” is the dominant element in the registrant’s mark inasmuch as it is the first wording in registrant’s mark.  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Further, the additional wording “WEAR” is highly descriptive (if not generic) as applied to the registrant’s clothing goods.    Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

Thus, the dominant element in applicant’s mark, JUNO, is identical in sound, connotation and commercial impression to the dominant element in the registrant’s mark, JUNO.  Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

For all of the foregoing reasons, applicant’s mark creates a similar overall commercial impression to the registrant’s marks, and confusion is likely.

 

Comparison of the Goods

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In this case, applicant seeks to register its mark for, among other things, “baby/toddler clothing, baby/children blankets, baby/children sheets” in International Class 10.  The registrant uses its marks as follows:

 

JUNOWEAR for “WOMEN'S CLOTHING, NAMELY, SUPPORT TOPS, BRAS, LEGGINGS, BICYCLE SHORTS, UNDERWEAR” in International Class 25

JUNO for “Women's clothing, namely, pants, shorts, jeans, skirts, dresses, sweaters, knit tops, underwear; outerwear, namely, jackets, coats, skiwear, gloves, and hats; sleepwear, swimwear” in International Class 25

 

Applicant’s and registrant’s goods are related in that they consist of baby/children’s bedding and clothing for babies, toddlers and women that are often provided by a single entity under a common mark.  As such, the goods would be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the goods originate from a common source.

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely, clothing for babies and/or toddlers, baby bedding and/or sheets, women’s bras, leggings, underwear, pants, shorts, jeans, skirts, dresses, sweaters, jackets, coats, gloves and/or hats, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

See U.S. Registration Nos. 4286370, 4551406, 5207671, 5689927, 5907933, 6143235, 6200983, 6229065, 6236389, 6236847, 6240407 and 6240767.

 

Since the marks are similar and the goods are related there is a likelihood of confusion as to the source of applicant’s goods.  Accordingly, applicant’s mark is refused registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §1207.01 et seq. because applicant’s mark so resembles the marks in U.S. Registration Nos. 3823205 and 3930472 as to be likely to cause confusion when used on or in connection with the goods identified in the application.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the above refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS

Applicant’s goods are identified as “Baby/toddler fruit/food feeder, pacifiers, baby teething toys, baby/toddler clothing, baby/children blankets, baby/children sheets, baby/children washcloths and towels, baby/toddler high chairs for feeding, baby/children strollers and car seats” in International Class 10.

 

As a preliminary matter, applicant’s use of a forward slash (“/”) between “baby” and “toddler” and “baby” and “children” in the identification of goods renders the specific nature of the goods unclear, and renders it unclear whether applicant intends to use the mark on all the identified goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “Baby/toddler fruit/food feeder” in the identification of goods is indefinite and must be clarified because the specific nature and purpose or use of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Applicant may substitute the following wording, if accurate; baby and toddler food feeder in the nature of cups and dishes adapted for feeding babies and children.

 

The wording “pacifiers” in the identification of goods is indefinite and must be clarified by specifying that the goods are for babies, if accurate.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “baby teething toys” in the identification of goods is indefinite and must be clarified because the specific nature of the goods is unclear, e.g., teething rings incorporating baby rattles (which are properly classified in International Class 10), or baby rattles incorporating teething rings (which are properly classified in International Class 28.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “baby/toddler clothing” in the identification of goods is indefinite and must be clarified by listing specific types of baby and toddler clothing, e.g., baby pants, bodysuits for babies and toddlers, baby bottoms, hats for babies and toddlers, etc.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  PLEASE NOTE:  The suggested examples are properly classified in International Class 25; thus, if applicant adopts the suggested wording, then applicant must add International Class 25 to the application and reclassify these goods in the proper international class.  Alternatively, applicant may delete “baby/toddler clothing” from the application, or delete the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “baby/children blankets” in the identification of goods is indefinite and must be clarified because the specific nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “baby blankets and children’s blankets.”  PLEASE NOTE:  The suggested examples are properly classified in International Class 24; thus, if applicant adopts the suggested wording, then applicant must add International Class 24 to the application and reclassify these goods in the proper international class.  Alternatively, applicant may delete “baby/children blankets” from the application, or delete the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “baby/children sheets” in the identification of goods is indefinite and must be clarified because the specific nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “crib sheets and bed sheets for babies and children.”  PLEASE NOTE:  The suggested examples are properly classified in International Class 24; thus, if applicant adopts the suggested wording, then applicant must add International Class 24 to the application and reclassify these goods in the proper international class.  Alternatively, applicant may delete “baby/children sheets” from the application, or delete the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “baby/children washcloths and towels” in the identification of goods is indefinite and must be clarified because the specific nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “washcloths for babies and children, children’s towels, hooded towels for babies.”  PLEASE NOTE:  The suggested examples are properly classified in International Class 24; thus, if applicant adopts the suggested wording, then applicant must add International Class 24 to the application and reclassify these goods in the proper international class.  Alternatively, applicant may delete “baby/children washcloths and towels” from the application, or delete the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “baby/toddler high chairs for feeding” in the identification of goods is indefinite and must be clarified because the specific nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “high chairs for babies and toddlers for feeding purposes.”  PLEASE NOTE:  The suggested examples are properly classified in International Class 20; thus, if applicant adopts the suggested wording, then applicant must add International Class 20 to the application and reclassify these goods in the proper international class.  Alternatively, applicant may delete “baby/toddler high chairs for feeding” from the application, or delete the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

The wording “baby/children strollers and car seats” in the identification of goods is indefinite and must be clarified because the specific nature of the goods is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “strollers for babies and children, children’s car seats.”  PLEASE NOTE:  The suggested examples are properly classified in International Class 12; thus, if applicant adopts the suggested wording, then applicant must add International Class 12 to the application and reclassify these goods in the proper international class.  Alternatively, applicant may delete “baby/children strollers and car seats” from the application, or delete the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant may adopt the following identification of goods, if accurate [the examining attorney’s suggestions appear in bold, underlined text]:

 

            Class 10:   Baby and toddler food feeder in the nature of cups and dishes adapted for feeding babies and children; pacifiers for babies; baby teething toys in the nature of teething rings incorporating baby rattles

 

            Class 12:   Strollers for babies and children; children’s car seats

 

            Class 20:   High chairs for babies and toddlers for feeding purposes

 

            Class 24:   Baby blankets and children’s blankets; crib sheets and bed sheets for babies and children; washcloths for babies and children, children’s towels, hooded towels for babies

 

            Class 25:   Baby and toddler clothing, namely, {list specific clothing, e.g., baby pants, bodysuits for babies and toddlers, baby bottoms, hats for babies and toddlers}

 

Applicant’s goods and/or 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).

 

ID Manual Online

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.

 

MULTIPLE CLASS APPLICATION REQUIREMENTS

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least five classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

ENTITY TYPE AND CITIZENSHIP OMITTED

Applicant must specify applicant’s legal entity type; e.g., an individual, and national citizenship, e.g., United States.  See 37 C.F.R. §2.32(a)(3)(i); TMEP §§803.03 et seq.

 

COLOR DRAWING WITH STATEMENT THAT COLOR NOT A FEATURE OF MARK – CLARIFICATION REQUIRED

Applicant must clarify whether color is a feature of the mark because the drawing shows the mark in color but the application includes a statement that color is not a feature of the mark and does not include a color claim or description referencing color.  See 37 C.F.R. §§2.52, 2.61(b). 

 

To clarify whether color is a feature of the mark, applicant may respond by satisfying one of the following:

 

(1)        If color is not a feature of the mark, applicant must submit a new drawing showing the mark only in black and white.  In this case, amending the mark to delete color would not be considered a material alteration; however, any other amendments to the drawing will not be accepted if they would materially alter the mark.  37 C.F.R. §2.72; see TMEP §§807.07(c), 807.14 et seq.  

 

(2)        If color is a feature of the mark, applicant must provide a complete list of all the colors claimed as a feature of the mark and a description of the literal and design elements that specifies where all the colors appear in those elements.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii).  Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).

 

The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors gold, black and beige are claimed as a feature of the mark.”

 

Description:  “The mark consists of a gold background containing the stylized word “JUNO in beige with the letter “J” formed by a beige umbrella with a winking smiley face in black.”

 

See TMEP §807.07(a)(i)-(b).

 

ADVISORY: APPLICANT MAY WISH TO CONSULT TRADEMARK ATTORNEY

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. 

 

RESPONSE GUIDELINES

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.

 

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. 

 

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

 

 

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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 January 11, 2021 for

U.S. Trademark Application Serial No. 90147302

 

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. 

 

 

Kertgate, Amy

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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 January 11, 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.”