PK Bijoux Trademarked Despite of Office Action

Protecting the Brand

         Pamela, the owner of a jewelry business in California approached Witmart to help with a trademark protection for the brand name PK Bijoux.  Pamela invested 6 years of hard work building the business into a reputable brand and did not want anyone else to take advantage of it.   As a sole business owner, Pamela did not have any time to learn the whole trademark filing processes or does she have time to respond to Office Actions. She wanted an experienced trademark filing company that knows the USPTO trademark registration process inside and out.  Witmart was exactly what she was looking for. 

Making an Informed Decision

          Witmart made sure that Pamela’s decision on trademark protection was an informed one.  The whole filing process started with the trademark consultant asking all the trademark-related questions regarding her brand and nature of the business.  Once all the important information is collected a comprehensive search was conducted to identify any possible risks involved with filing the trademark.

         Pamela provided two names that she considered for trademark registration : “Bijoux” and “PK Bijoux”. – The comprehensive search revealed that while the degree of protection for both was the same, “PK Bijoux” had a significantly higher chance of passing the examination process. “Bijoux” in French means “jewel”, which may be considered “merely descriptive” in the eyes of a USPTO trademark attorney (trademark examiner). “PK Bijoux “on the other hand does not face the same problem due to the distinctive term, “PK” in front of “Bijoux”.  Pamela agreed with our assessment and recommendation and was ready to file the mark. Our trademark lawyers managed to prepare and file the trademark application with the USPTO – all Pamela had to do was sign the application and relax.

Office Actions

        Witmart helped Pamela to focus on running her business without having to even think about the tedious trademark registration process. A few months into the application process, Pamela received an Office Action from the USPTO trademark attorney . As predicted by trademark consultant, the USPTO examiner considered that “Bijoux” merely described a feature of applicant’s goods, and thus is not a registrable component of the mark. The examiner asked the applicant to submit a disclaimer for “Bijoux”. Moreover, the examiner asked whether “PK” identifies a particular living individual and asked for consent from the individual. Without legal experience and not knowing how to best respond, Pamela began to panic.

        Instead of having an external lawyer charge her by a high hourly rate regardless of the result of Office action, Witmart once again came to the rescue.  Witmart offered to handle all office action responses with a flat fee service package. Witmart’s trademark attorneys handled all office actions relating to Pamela’s case – saving her hundreds (if not thousands) of dollars and while keeping her constantly updated throughout the process.

Satisfied Customer

        “PK Bijoux” was approved by the USPTO, and a trademark certificate was issued in April 2017. When we informed Pamela of the good news, she expressed her contentment: “I’m very satisfied with Witmart’s trademark service.” With less than a year spent in the registration process, and without preoccupying Pamela’s time in this tiresome task, Witmart turned a challenging trademark filing into reality.