To: | Samantha Feher LLC (njdocket@gtlaw.com) |
Subject: | U.S. Trademark Application Serial No. 90186112 - BRUNCH CLUB - 180791010300 |
Sent: | February 03, 2021 12:53:16 PM |
Sent As: | ecom121@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90186112
Mark: BRUNCH CLUB
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Correspondence Address: |
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Applicant: Samantha Feher LLC
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Reference/Docket No. 180791010300
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: February 03, 2021
The referenced application has been reviewed by the assigned trademark examining attorney.
SEARCH OF USPTO DATABASE OF MARKS
Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
· ADVISORY ABOUT A PRIOR-FILED APPLICATION
· AMENDED IDENTIFICATION OF SERVICES REQUIRED
· DISCLAIMER REQUIRED
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Upon receipt of applicant’s response resolving the following requirements, action on this application will be suspended pending the disposition of U.S. Application Serial No. 90170922. 37 C.F.R. §2.83(c); TMEP §§716.02(c), 1208.02(c).
Applicant must also address the following requirement.
The wording “On-line retail store services featuring … accessories” in the identification of services is indefinite and must be clarified to specify the nature of these accessories, because the wording could refer to accessories to a great range of goods in a variety of fields. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following wording, if accurate:
Class 35: On-line retail store services featuring clothing, clothing accessories and jewelry
The applicant should also note the following when amending the identifications:
Applicant must also address the following requirement.
The attached dictionary evidence shows that “CLUB” means “a commercial organization offering members special benefits.” As such, in relation to the applicant’s “On-line retail store services featuring clothing and accessories and jewelry,” the wording merely describes a feature or characteristic of the services in that the applicant is providing consumers special benefits for clothing.
Additionally, the attached third-party registrations demonstrates that the “CLUB” is disclaimed for services similar to applicant’s services. Third-party registrations featuring goods and/or services the same as or similar to applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on acquired distinctiveness, or registered on the Supplemental Register. E.g., In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CLUB” 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.
ASSISTANCE
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.
/Valeriya Painter/
Examining Attorney
Law Office 121
(571) 270-7132
valeriya.painter@uspto.gov
RESPONSE GUIDANCE