Beauty Creative Arts Fashion

So Jaded

Written by Kate Dachille

To add insult to injury over the college admissions scandal, Lori Loughlin’s daughter, Olivia Jade Giannulli, had her trademark registration rejected by the United States Patent and Trademark Office (USPTO) last month. Not only was it rejected, the USPTO schooled Olivia Jade on her use of grammar as well as the specificity of the goods and services described in her trademark application for “Olivia Jade Beauty”. (Don’t worry, though, the errors were corrected and the application was approved April 2.)

While the trademark application was ultimately approved, the trip up (selfishly) provides a great opportunity to discuss the importance of filing correctly.

In this case, the Office action letter provided that the identification of certain goods and services was “indefinite and must be clarified,” and that “applicant must correct the punctuation in the identification to clarify the individual items in the list of goods.” The letter further clarified that “[c]ommas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services,” and “[a]n applicant should not use colons, periods, exclamation points, and question marks in an identification.” And to really drill the point home, the following grammar lesson was included:

“In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo)…Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).”

You might be asking yourself — along with whether you’re back in middle school — where all of these rules are coming from. To which I would respond: it’s all thanks to the Trademark Manual of Examining Procedure (the TMEP).

The TMEP provides “trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO,” including guidelines and procedures for Examining Attorneys. In other words, it’s a useful resource if you’re interested in applying for a trademark since it outlines do’s and don’ts and provides information concerning what an examiner will be reviewing for when determining whether your mark is eligible for registration.

Since there are 19 separate sections, along with a handful of appendices, we don’t have time to walk through everything contained in the TMEP; however, I’d encourage you to take a look if you are considering registering a mark or are curious what it takes in order to register a mark. It could save you some time (and money) down the road. Ok, getting off my soapbox now…

The section relevant to the Olivia Jade Beauty trademark registration is Chapter 1400 – Classification and Identification of Goods and Services; specifically, 1402 – Identification of Goods and Services.

This section contains the basis for the majority of the reasoning for the rejection letter sent for the Olivia Jade Beauty trademark application in March, including:

  •  Be “specific, definite, clear, accurate, and concise” in the identification of goods and/or services.  
  •  If there are spelling errors in the identification, you’re likely going to hear from the examining attorney, as this requires correction.
  • Use punctuation correctly.
    • Commas are generally used to “separate items within a particular category of goods or services,” including before and after the use of “namely.”  
    • Commas and semicolons each have a specific purpose when identifying goods and services, especially those sold as a set or kit. The general rule is that “items that are to be sold together (e.g., as components of a system or kit) should be separated by commas.”  But, “other goods within the same class that are to be sold independently of the kit or system should be separated by semicolons.”
  • Only use approved punctuation, consisting of commas, semicolons, and apostrophes. Don’t use colons, question marks, exclamation points, and periods, symbols (such as asterisks (*), at symbols (@), or carets (^)). We’re pretty sure emojis are out as well. 😔

In other words, be very specific and have correct grammar when filing a trademark application. Otherwise, you might end with an abandoned trademark application if the errors are not corrected in a satisfactory way.

Turning back to the Olivia Jade Beauty trademark, the identification in the application was corrected, which allowed for the trademark registration to proceed. At least Olivia Jade was able to clear up the issues with her application, which solves one of her (albeit smaller) problems. We’ll have a bit of waiting to do in order to find out if the mark is ultimately registered, but it’s at least on the right track.

Have you ever applied for a trademark? How was your experience? Tell us about it in the comments!

About the author

Kate Dachille

Kathryn (Kate) Dachille is an attorney specializing in the areas of intellectual property, marketing, and advertising, with a keen interest in entertainment, sports, fashion and media. She is a graduate of the University of Richmond School of Law (J.D., summa cum laude, Intellectual Property concentration), and New York University (B.A., Economics).

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