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:  March 15, 2021

 

SUMMARY OF ISSUES:

• Disclaimer is Required

 

Search Results

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Disclaimer

Applicant must disclaim the wording “BIRTHSTONE.COM” because it is merely descriptive of a feature of applicant’s goods and services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from www.merriam-webster.com shows that BIRTHSTONE identifies a category of gemstone.  The applicant’s specimens show that the applicant’s goods include birthstone jewelry and that the applicant provides birthstone jewelry through its services. 

 

The non-source-identifying generic top-level domain (gTLD) “.com” merely indicates an Internet address for use by commercial, for-profit organizations.  See, e.g., In re 1800Mattress.com IP LLC, 586 F.3d 1359, 1364, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 91 USPQ2d 1532, 1533, 1535 (Fed. Cir. 2009); In re Oppedahl & Larsen LLP, 373 F.3d 1171, 1175-77, 71 USPQ2d 1370, 1373-74 (Fed. Cir. 2004); see also TMEP §§1209.03(m), 1215.01.

 

The gTLD, .COM, is merely descriptive of applicant’s goods and services because it directly conveys that the goods are provided by a commercial entity on the Internet and that the services are offered on the Internet in association with the mark.  The applicant’s specimens support this descriptive meaning.

 

The non-source-identifying gTLD, when combined with the descriptive wording in the mark, adds no source-identifying significance but retains its significance as indicating an Internet address only.  Accordingly, the combination of the merely descriptive wording “BIRTHSTONE” coupled with the non-source-identifying gTLD “.COM” is merely descriptive of applicant’s goods and services because this combination immediately informs prospective purchasers that applicant’s goods include birthstone jewelry and are from an Internet business and that the services provide birthstone jewelry through an Internet service.  The wording is descriptive when used in association with the applicant’s goods and services and must be disclaimed. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “BIRTHSTONE.COM” 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. 

 

Issue may be Resolved via Examiner’s Amendment

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

 

 

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

 

 

/Kelley L. Wells/

Trademark Examining Attorney

Law Office 118

571-272-9312

Kelley.Wells@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 March 15, 2021 for

U.S. Trademark Application Serial No. 90254606

 

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. 

 

 

/Kelley L. Wells/

Trademark Examining Attorney

Law Office 118

571-272-9312

Kelley.Wells@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 March 15, 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.”