To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Parodi, Daniel, J (djparodi@gmail.com)
`
`U.S. TRADEMARK APPLICATION NO. 87848732 - AUTHENTIC WAREHOUSE - N/A
`
`7/12/2018 6:29:51 PM
`
`ECOM111@USPTO.GOV
`
`Attachments:
`
`Attachment - 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`*87848732*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`U.S. APPLICATION
`SERIAL NO.   87848732
`
`           
`
`MARK: AUTHENTIC
`WAREHOUSE
`
`CORRESPONDENT
`ADDRESS:
`  
`       PARODI, DANIEL, J
`  
`       PARODI, DANIEL, J
`         31 PROVIDENCE
`CT
`           NEWTOWN, PA
`18940
`    
`   
`APPLICANT: Parodi,
`Daniel, J
`
`    
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`   
`
`NO:       
`
`  N/A
`CORRESPONDENT E-
`
`MAIL ADDRESS:   
`
`     djparodi@gmail.com
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.   A RESPONSE
`TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
`MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
`
`ISSUE/MAILING DATE: 7/12/2018
`
`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:
`
`Specimen
`Disclaimer
`Entity
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`SEARCH OF OFFICE’S DATABASE OF MARKS
`
`The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that
`would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).
`
`SPECIMEN
`
`Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class(es) 35.  Trademark
`Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  Specifically, the
`specimen merely shows a packing slip showing a shipment of goods was made to the applicant.  It does not show any use of the mark in
`connection with wholesale distributorship services.
`
`An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each
`international class of services identified in the application or amendment to allege use.   15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv),
`
`2.56(a); TMEP §§904, 904.07(a).  
`
`Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and
`webpages that show the mark used in the actual sale, rendering, or advertising of the services.  See TMEP §1301.04(a), (h)(iv)(C).  Specimens
`comprising advertising and promotional materials must show a direct association between the mark and the services.  TMEP §1301.04(f)(ii).
`
`Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
`
`(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 the mark in actual use in commerce
`for the services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is
`accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The
`substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing
`date of the application or prior to the filing of the amendment to allege use.”   The substitute specimen cannot be accepted without
`this statement.
`
`(2)       
`
`Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate
`additional fee(s) and filing requirements such as providing a specimen.
`
`For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic
`Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/specimen.jsp.
`
`DISCLAIMER REQUIRED
`
`Applicant must disclaim the wording “ WAREHOUSE” because it merely describes an ingredient, quality, characteristic, function, feature,
`purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a);
`DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl
`
`& Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).  
`
`The attached evidence from Oxford Dictionaries shows this wording means “A large building where raw materials or manufactured goods may
`be stored before their export or distribution for sale.”   Therefore, the wording merely describes a feature of applicant’s services, namely,
`applicant’s distributorship services are rendered in a large building where the goods to be distributed are stored .
`
`An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See
`Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825
`(TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove
`the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP
`
`§1213.  
`
`If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d
`1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
`
`Applicant should submit a disclaimer in the following standardized format:
`
`No claim is made to the exclusive right to use “WAREHOUSE” apart from the mark as shown.
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`For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application
`System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/disclaimer.jsp.
`
`ISSUE REGARDING APPLICANT’S ENTITY TYPE
`
`The name of an individual person appears in the section of the application intended for the trademark owner’s name; however, the legal entity is
`set forth as a limited liability company.  Applicant must clarify this inconsistency.  See 37 C.F.R. §§2.32(a)(2), (a)(3)(i)-(ii), 2.61(b); TMEP
`
`§803.02(a).  
`
`If applicant is an individual, applicant should simply request that the legal entity be amended to “individual” and must indicate his/her country of
`citizenship for the record.  TMEP §803.03(a).  Alternatively, if applicant is a limited liability company, applicant must provide the correct name
`of the limited liability company and the U.S. state or foreign country of incorporation or organization.  TMEP §803.03(h).
`
`If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration may be refused
`because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who
`owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
`
`RESPONSE GUIDELINES
`
`For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action
`includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. 
`Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To
`respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.  For more
`information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “ Responding to
`Office Actions” on the USPTO’s website.
`
`If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the
`application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP
`§§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R.
`§§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
`
`When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application,
`which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within
`two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System
`(TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
`
`If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail
`communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this
`Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 
`Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this
`Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02,
`709.06.
`
`    
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online
`using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office
`actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3)
`agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b);
`TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125
`per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS
`Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring
`
`this additional fee.     
`
`/Jonathan R. Falk/
`
` 
` 
` 
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` 
` 
` 
` 
` 
`

`

`Jonathan R. Falk
`Trademark Examining Attorney
`Law Office 111
`(571)272-5301
`Jonathan.falk@uspto.gov
`
`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.   Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. 
`For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned
`trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
`
`response.  
`
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
` 
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`

`

`DICTIONARY
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`THESAURUS
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`GRAMMAR ,
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`M iun’r't’r'f Fly
` DICTIONARY (US) v warehouse
`English
`Oxford Lit/fig Dictionaries
`
`Home > North Ameritan English > warehouse
`
`Definition of warehouse in US English:
`
`warehouse
`NOUN
`
`009 +
`
`
`
`export or distribution for sale.
`
`1 A large building where raw materials or manufactured goods may be stored before their
`
`+ Example sentences
`
`+ synonyms
`
`1.1 A large wholesale or retail store.
`’u discount warehouse '
`+ More example Sentences
`
`+ Synonyms
`
`V E R B
`[WITH OBJEcn
`
`1 Store (goods) in a warehouse.
`+ Example sentences
`
`Weekly Word Watch: wasteman.
`womp womp. and werpt
`
`
`
`.
`man
`Resistance is fertile: the language
`borne ofthefeminist movement
`
`1.1
`
`Place (imported goods) in a bonded warehouse pending the payment of import duty.
`
`1.2 North Amerimn informal Pla(e (someone, typieally a prisoner or a psythiatrit patient) in a
`
`large. impersonal institution in which their problems are not satisfactorily addressed.
`
`httpsji'enofinrddicuonanes,conidefimtioniuslwarehouse
`6:!9:23PM 711212018
`
`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Parodi, Daniel, J (djparodi@gmail.com)
`
`U.S. TRADEMARK APPLICATION NO. 87848732 - AUTHENTIC WAREHOUSE - N/A
`
`7/12/2018 6:29:52 PM
`
`ECOM111@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 7/12/2018 FOR U.S. APPLICATION SERIAL NO. 87848732
`
`Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an
`official letter to which you must respond.  Please follow these steps:
`
`(1)  READ THE LETTER by clicking on this link or going to http://tsdr.uspto.gov/, entering your U.S. application serial number, and clicking
`on “Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`
`hours of this e-mail notification.  
`
`(2)  RESPOND WITHIN 6 MONTHS (or sooner if specified in the Office action), calculated from 7/12/2018, using the Trademark Electronic
`Application System (TEAS) response form located at http://www.uspto.gov/trademarks/teas/response_forms.jsp.  A response transmitted through
`TEAS must be received before midnight Eastern Time of the last day of the response period.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`
`responses to Office actions.  
`
`(3)  QUESTIONS about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your
`
`application, identified below.  
`
`/Jonathan R. Falk/
`Jonathan R. Falk
`Trademark Examining Attorney
`Law Office 111
`(571)272-5301
`Jonathan.falk@uspto.gov
`
`WARNING
`
`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.  
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
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`

`

`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
`
`  
`