To:
`Subject:
`Sent:
`Sent As:
`
`Christopher A. DiSchino, Esq.(christopher@dsmiami.com)
`U.S. Trademark Application Serial No. 97003843 - RHYTHM STEP
`June 06, 2022 12:48:08 PM EDT
`tmng.notices@uspto.gov
`
`Attachments
`
`90803087
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`
`
`U.S. Application Serial No.  97003843
`
`Mark:   RHYTHM STEP
`
`Correspondence Address:  
`CHRISTOPHER A. DISCHINO, ESQ.
`DISCHINO & SCHAMY, PLLC
`4770 BISCAYNE BLVD., SUITE 600
`MIAMI FL 33137 UNITED STATES
`
`Applicant:   A MILLION STYLES BOXING LLC
`
`Reference/Docket No.  N/A
`
`Correspondence Email Address:   christopher@dsmiami.com
`
`
`
`
`
`
`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 06, 2022
`
`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
`
`
`
`•
`•
`
`Mark Differs on Drawing and Specimen
`Prior Filed Application
`
`
`SEARCH OF USPTO DATABASE OF MARKS
`
`
`The trademark examining attorney searched the USPTO database of registered and pending marks and
`found no conflicting registered marks that would bar registration under Trademark Act Section 2(d). 15
`U.S.C. §1052(d); TMEP §704.02. However, a mark in a prior-filed pending application may present a
`bar to registration of applicant’s mark.
`
`
`MARK DIFFERS ON DRAWING AND SPECIMEN
`
`
`Mark shown on drawing does not match mark on specimen. Registration is refused because the
`specimen does not show the mark in the drawing in use in commerce in International Class  41, which is
`required in the application or amendment to allege use. 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). The mark
`appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a
`substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP
`§807.12(a).
`
`In this case, the specimen displays the mark as RHYTHM STEP 101. However, the drawing displays
`the mark as RHYTHM STEP. The mark on the specimen does not match the mark in the drawing
`because "101" with the wording "RHYTHM STEP" is used throughout the specimen. Applicant has
`thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
`
`Response options. Applicant may respond to this refusal by satisfying one of the following:
`
`
`Submit a different specimen (a verified “substitute” specimen) for each
`(1)       
`applicable international class that (a) shows the mark in the drawing in actual use in
`commerce for the goods and/or services in the application or amendment to allege use, and
`(b) 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.
`
`
`
`
`
`
`
`Examples of specimens.  Specimens for services must show a direct association between
`the mark and the services and include: (1) copies of advertising and marketing material, (2)
`a photograph of business signage or billboards, or (3) materials showing the mark in the
`sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(1), (c); TMEP
`§1301.04(a), (h)(iv)(C). 
`
`Any webpage printout or screenshot submitted as a specimen must include the webpage’s
`URL and the date it was accessed or printed on the specimen itself, within the TEAS form
`that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C.
`§1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
`
`Submit a request to amend the filing basis to intent to use under Section
`(2)       
`1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no
`specimen is required before publication. This option will later necessitate additional fee(s)
`
`

`

`and filing requirements such as providing a specimen.
`
`
`The USPTO will not accept an amended drawing submitted in response to this refusal because the
`changes would materially alter the drawing of the mark in the original application or as previously
`acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, the addition of "101" to
`applicant's drawing would alter the commercial impression of the applied-for mark.
`
`For more information about drawings and instructions on how to satisfy these response options using
`the online Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
`
`Applicant should note the following potential additional ground for refusal.
`
`
`PRIOR FILED APPLICATION
`
`
`The filing date of pending U.S. Application Serial No. 90803087 precedes applicant’s filing date.  See
`attached referenced application.  If the mark in the referenced application registers, applicant’s mark
`may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion
`between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore,
`upon receipt of applicant’s response to this Office action, action on this application may be suspended
`pending final disposition of the earlier-filed referenced application.
`
`In response to this Office action, applicant may present arguments in support of registration by
`addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced
`application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right
`to address this issue later if a refusal under Section 2(d) issues.
`
`Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
`submitting evidence and arguments in support of registration.
`
`Response guidelines.   Please call or email the assigned trademark examining attorney with questions
`about this Office action. Although an examining attorney cannot provide legal advice, the examining
`attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office
`action. See TMEP §§705.02, 709.06. The USPTO does not accept emails as responses to Office
`actions; however, emails can be used for informal communications and are included in the application
`record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
`
`How to respond.   Click to file a response to this nonfinal Office action.
`
`
`/Katrina Yang/
`Katrina Yang
`Trademark Examining Attorney
`Law Office 127
`(571) 270-5622
`katrina.yang@uspto.gov
`
`
`
`

`

`RESPONSE GUIDANCE
`
`•
`
`•
`
`•
`
`Missing the response deadline to this letter will cause the application to abandon.  The
`response must be received by the USPTO before midnight Eastern Time of the last day of the
`response period.  TEAS 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.
`
`

`

`Print: Mon Jun 06 2022
`
`90803087
`
`(4) STANDARD CHARACTER MARK
`
`Mark Punctuated
`RHYTHMSTEP
`Translation
`Goods/Services
`
`•
`
`IC 041. US 100 101 107.G & S: Physical fitness instruction
`
`Mark Drawing Code
`(4) STANDARD CHARACTER MARK
`Design Code
`Serial Number
`90803087
`Filing Date
`20210630
`Current Filing Basis
`1B
`Original Filing Basis
`1B
`Publication for Opposition Date
`20220426
`Registration Number
`Date Registered
`Owner
`(APPLICANT) JABS BY GINA LLC LIMITED LIABILITY COMPANY DELAWARE 57 Middlesex Drive
`Slingerlands NEW YORK 12159
`Priority Date
`Disclaimer Statement
`Description of Mark
`Type of Mark
`SERVICE MARK
`Register
`PRINCIPAL
`Live Dead Indicator
`LIVE
`
`

`

`Attorney of Record
`RYAN D. ARTIS
`
`

`

`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on June 06, 2022 for
`U.S. Trademark Application Serial No.  97003843
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office
`action.  You must respond to this Office action in order to avoid your application
`abandoning.  Follow the steps below.
`
`(1)   Read the Office action. This email is NOT the Office action.
`
`(2)  Respond to the Office action by the deadline using the Trademark Electronic Application
`System (TEAS). Your response must be received by the USPTO on or before 11:59 p.m.
`Eastern Time of the last day of the response period. Otherwise, your application will be
`abandoned. See the Office action itself regarding how to respond.
`
`(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the
`application process, the status of your application, and whether there are outstanding deadlines
`to the Trademark Assistance Center (TAC).
`
`After reading the Office action, address any question(s) regarding the specific content to the
`USPTO examining attorney identified in the Office action.
`
`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 to ensure you receive important USPTO
`notices about your application.
`
`Beware of trademark-related scams . Protect yourself from people and companies that
`may try to take financial advantage of you. Private companies may call you and pretend
`to be the USPTO or may send you communications that resemble official USPTO
`documents to trick you. We will never request your credit card number or social security
`number over the phone. And all official USPTO correspondence will only be emailed
`from the domain “@uspto.gov.” Verify the correspondence originated from us by using
`your Serial Number in our database, TSDR, to confirm that it appears under the
`“Documents” tab, or contact the Trademark Assistance Center. 
`
`

`

`•
`
`Hiring a U.S.-licensed attorney . If you do not have an attorney and are not required to
`have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney
`specializing in trademark law to help guide you through the registration process. The
`USPTO examining attorney is not your attorney and cannot give you legal advice, but
`rather works for and represents the USPTO in trademark matters.
`
` 
`