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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`Mitchell, Zachary (MITCH4RX@dukes.jmu.edu)
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`U.S. TRADEMARK APPLICATION NO. 88275924 - PARODY APPAREL - N/A
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`4/9/2019 9:28:47 AM
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`ECOM116@USPTO.GOV
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`*88275924*
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`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
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`VIEW YOUR APPLICATION FILE
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`U.S. APPLICATION
`SERIAL NO. 88275924
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`
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`MARK: PARODY
`APPAREL
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`CORRESPONDENT
`ADDRESS:
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` MITCHELL,
`ZACHARY
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` MITCHELL,
`ZACHARY
` 29522 HARBORTON
`RD. PO BOX 419
` 29522 HARBORTON
`RD. PUNGOTEAGUE
`
` PUNGOTEAGUE, VA
`23422
`APPLICANT: Mitchell,
`Zachary
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`CORRESPONDENT’S
`REFERENCE/DOCKET
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` N/A
`CORRESPONDENT E-
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`NO:
`MAIL ADDRESS:
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`MITCH4RX@dukes.jmu.edu
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`OFFICE ACTION
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`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.
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`ISSUE/MAILING DATE: 4/9/2019
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`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.
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`SUMMARY OF ISSUES:
`Applicant Name and Entity Type Require Clarification
`Disclaimer Statement Required
`Specimen Not Acceptable as Evidence of Actual Use
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`SEARCH OF OFFICE’S DATABASE OF MARKS
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`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).
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`APPLICANT NAME AND ENTITY TYPE REQUIRE CLARIFICATION
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`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
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`§803.02(a).
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`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).
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`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).
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`DISCLAIMER REQUIRED
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`Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be
`registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s
`appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
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`In this case, applicant must disclaim the wording “APPAREL” because it is not inherently distinctive. These unregistrable term(s) at best are
`merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or 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
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`§§1213, 1213.03(a).
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`The applicant’s identified goods are “shirts.”
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`Thus, the wording merely describes applicant’s goods because shirts are a type of apparel.
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`Applicant may respond to this issue by submitting a disclaimer in the following format:
`No claim is made to the exclusive right to use “APPAREL” apart from the mark as shown.
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`For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the
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`Disclaimer webpage.
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`SPECIMEN
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`The applicant submitted four proposed specimens. On three of the them, the mark does not appear, and the fourth is a drawing or image of the
`mark only.
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`Registration is refused because the specimen in International Class 25 does show use of the mark and/or is merely a photocopy of the drawing or
`a picture or rendering of the applied-for mark, and thus fails to show the applied-for mark in use in commerce with the goods and/or services for
`each international class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Chica, 84
`USPQ2d 1845, 1848 (TTAB 2007); TMEP §§904, 904.07(a), 1301.04(g)(i). 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 goods and/or services identified in the application or
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`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).
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`Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or
`packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for
`goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP
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`§904.03(i).
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`Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
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`(1)
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`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 goods and/or 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.
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`(2)
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`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.
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`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.
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`TRADEMARK COUNSEL
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`Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney
`specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining
`attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO
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`attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06.
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`For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory
`of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a
`private attorney. 37 C.F.R. §2.11.
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`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
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`this additional fee.
`
`/John Dwyer/
`Examining Attorney
`Law Office 116
`571-272-9155
`John.Dwyer1@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.
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`All informal e-mail communications relevant to this application will be placed in the official application record.
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`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
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`response.
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`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/.
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`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Mitchell, Zachary (MITCH4RX@dukes.jmu.edu)
`
`U.S. TRADEMARK APPLICATION NO. 88275924 - PARODY APPAREL - N/A
`
`4/9/2019 9:28:48 AM
`
`ECOM116@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 4/9/2019 FOR U.S. APPLICATION SERIAL NO. 88275924
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`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:
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`(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.”
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`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
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`hours of this e-mail notification.
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`(2) RESPOND WITHIN 6 MONTHS (or sooner if specified in the Office action), calculated from 4/9/2019, 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.
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`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
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`responses to Office actions.
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`(3) QUESTIONS about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your
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`application, identified below.
`
`/John Dwyer/
`Examining Attorney
`Law Office 116
`571-272-9155
`John.Dwyer1@uspto.gov
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`WARNING
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`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application. For
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`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.
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`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
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`“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
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`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.
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