To: | Jasmine Smith (rosezena@rjpiercelaw.com) |
Subject: | U.S. Trademark Application Serial No. 90534765 - DUO - N/A |
Sent: | June 30, 2021 04:30:04 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90534765
Mark: DUO
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Correspondence Address: |
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Applicant: Jasmine Smith
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Reference/Docket No. N/A
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: June 30, 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.
No Likelihood of Confusion
Ornamental Refusal
Applicant seeks to register the stylized mark DUO for use with “Hats; Athletic sweaters; Athletic tops; Baseball caps; Baseball caps and hats; Fleece pullovers; Fleece tops; Graphic T-shirts; Head wear; Headwear; Headwear, namely, face, face masks; Hooded sweatshirts; Hoods; Jogging outfits; Jogging pants; Jogging suits; Outerwear, namely, jackets; Pullovers; Shirts; Shirts and short-sleeved shirts; Short-sleeve shirts; Short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; Sports caps and hats; Sports shirts; Sweat shirts; Sweat jackets; Sweat pants; Sweat suits; Sweaters; Sweatshirts; T-shirts; Tank-tops; Tank tops; Tee-shirts; Tee shirts; Tops as clothing; Track jackets; Track pants; Track suits; Wearable garments and clothing, namely, shirts; Hooded pullovers; Hooded sweat shirts”.
Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would likely regard it as a source-indicator for the goods. See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202. The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a trademark. In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).
In this case, the mark as shown on the specimen would be perceived as merely a decorative or ornamental feature of the goods because the pictures show the mark centered across the back of a jacket or centered across the front of a shirt. As positioned, the mark appears merely decorated and not an indicator of the source of the goods. The webpage shows the mark DUO to place an order for the goods, but the mark is in standard character form, not the stylized form as shown on the drawing page.
In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use) and (b) shows proper trademark use for each international class identified in the application or amendment to allege use.
(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.
(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark has allowed consumers now directly to associate the mark with applicant as the source of the goods.
(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
(5) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate additional fee(s) and filing requirements.
For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.
The size, location, dominance, and significance of the alleged mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013)); In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1687 (TTAB 2013) (quoting In re Right-On Co., 87 USPQ2d 1152, 1156 (TTAB 2008)); TMEP §1202.03(a).
Thus the examining attorney refuses registration of the mark under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB 1987); TMEP §§904.07(b), 1202.03 et seq.
Applicant May Respond
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Goods – Amendment Required
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.
Applicant may adopt the following identification, if accurate:
Hats; Athletic sweaters; Athletic tops; Baseball caps; Baseball caps and hats; Fleece pullovers; Fleece tops; Graphic T-shirts; Head wear; Headwear; Headwear, namely, face masks; Hooded sweatshirts; Hoods; Jogging outfits; Jogging pants; Jogging suits; Outerwear, namely, jackets; Pullovers; Shirts; Shirts and short-sleeved shirts; Short-sleeve shirts; Short-sleeved shirts; Short-sleeved or long-sleeved t-shirts; Sports caps and hats; Sports shirts; Sweat shirts; Sweat jackets; Sweat pants; Sweat suits; Sweaters; Sweatshirts; T-shirts; Tank-tops; Tank tops; Tee-shirts; Tee shirts; Tops as clothing; Track jackets; Track pants; Track suits; Wearable garments and clothing, namely, shirts; Hooded pullovers; Hooded sweat shirts
Mark Does not Reproduce Satisfactorily
Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
Description – Amendment Required
The following description is suggested, if accurate: The mark consists of the stylized wording DUO with stylized Roman number II inside the letter O. The letters UO are underlined.
Transliteration/Translation Statement Withdrawn
Consent Statement Withdrawn
If the applicant has any questions or needs assistance in responding to this Office action, please call or e-mail the assigned examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/D. Beryl Gardner/
Trademark Examining Attorney
Law Office 117
571-272-9162 (O)
571-273-9162 (F)
beryl.gardner@uspto.gov
RESPONSE GUIDANCE