UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/478278
APPLICANT: TAKARA BELMONT CORPORATION
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CORRESPONDENT ADDRESS: JAMES M. SLATTERY BIRCH, STEWART, KOLASCH & BIRCH LLP P.O. BOX 747 FALLS CHURCH, VA 22040-0747
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom114@uspto.gov
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MARK: ROLLERBALL
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CORRESPONDENT’S REFERENCE/DOCKET NO: 1312-0308T
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/478278
The following authorities govern the processing of trademark and service mark applications: The Trademark Act, 15 U.S.C. Section 1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Trademark Manual of Examining Procedure (TMEP).
The assigned examining attorney has reviewed the referenced application and determined the following. The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
The applicant must respond to the following informalities in order for the application to proceed.
The nature of the goods on which the applicant uses the mark is not clear from the present record. The applicant must submit samples of advertisements or promotional materials. If such materials are not available, the applicant must submit a photograph of the goods and describe their nature, purpose and channels of trade. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
The wording in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01. In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases. If the applicant chooses to use indefinite terms, such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” “apparatus” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names. TMEP §§1402.01 and 1402.03(a). Please note that some of the goods may belong in different classes.
When an applicant has submitted an indefinite identification of goods or services, it is Office practice to suggest an acceptable identification. In this case, however, the examining attorney cannot determine the nature of the goods/services because there is insufficient information in the record. The wording, “hair treatment, hair care, hair styling, hair setting and hair coloring apparatus and equipment”, are goods that may belong in different classes. If the goods are used for washing or rinsing, then the goods are in Class 07. If the goods are used for cutting or crimping, then the goods are in Class 08. If the goods are used for for heating and drying, then the goods are in Class 11. All other hair goods are in Class 09, if electric and are similar to curlers.
The identification of services is indefinite because the applicant uses the wording “including.” The recitation must be all‑inclusive. The applicant should amend the identification to replace this wording with “and.” The applicant may amend to list only services that are within the scope of the services recited in the identification. 37 C.F.R. §2.71(a); TMEP §§1402.03(a) and 1402.11. The applicant must “structural” to “parts.”
The wording, “accessories”, in the identification of goods is too broad because it could include items classified in other classes. The applicant must amend the identification to list each item by its common commercial name. TMEP §§1401.04(b), 1402.01 and 1402.03. Otherwise, the applicant must delete the wording.
The applicant may adopt the following identification and classification, if accurate:
Hair treatment apparatus and equipment, namely [specify common commercial name and function]; hair care apparatus and equipment, namely [specify common commercial name and function]; hair setting apparatus and equipment, namely [specify common commercial name and function] and structural parts for the aforesaid goods in International Class 00 (class will depend on function).
Hair accessories, namely [specify common commercial name, e.g., hair rinses, hair styling preparations] in International Class 03.
Hair accessories, namely [specify common commercial name, e.g., medicated hair care preparations] in International Class 05.
Hair coloring apparatus and equipment, namely [specify common commercial name and function, e.g., hair coloring machines] and structural parts for the aforesaid goods; Hair treatment apparatus and equipment, namely [specify common commercial name and function, e.g., automatic hair washing and rinsing machines] in International Class 07.
Hair care apparatus and equipment, namely [specify common commercial name and function, e.g., electric hair cutters, clippers and trimmers, nonelectric hair cutters, clippers and trimmers] in International Class 08
Electric hair styling apparatus and equipment, namely [specify common commercial name and function, e.g., curlers, curling irons] and structural parts for the aforesaid goods in International Class 09.
Heating apparatus, namely [specify common commercial name, e.g., electric heating pads not for medical purposes]; drying apparatus [specify common commercial name, e.g., clothes dryers]; hair drying apparatus and equipment, namely [specify common commercial name, e.g., handheld electric hair dryers, stationary hair dryers for commercial and domestic use]; and structural parts for the aforesaid goods in International Class 11.
Hair accessories, namely [specify common commercial name, e.g., hair brushes, hair curl clips] in International Class 21.
Hair accessories, namely [specify common commercial name, e.g., hair nets] in International Class 26.
TMEP §1402.01.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP section 804.09. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
To the extent the suggested identification of goods or services is incomplete or inaccurate, the applicant is advised that the Trademark Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at www.uspto.gov under the heading Trademarks and the subheadings Guidance and Manuals and Legal Resources or at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:
(1) The applicant must specifically identify the goods/services in each class and list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
(3) The applicant must submit:
(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or
(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.
(4) The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above. 37 C.F.R. §§2.59(a) and 2.71(c).
The drawing is not acceptable because it has stippling around the entirety of the mark and will not reproduce satisfactorily. The applicant must submit a new drawing showing the mark clearly and conforming to 37 C.F.R. §2.52. TMEP §807.07(a).
The requirements for a special‑form drawing are as follows:
(1) The drawing must appear in black and white; no color is permitted.
(2) Every line and letter must be black and clear.
(3) The use of gray to indicate shading is unacceptable.
(4) The lining must not be too fine or too close together.
(5) The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide. It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.
(6) If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a). The Office will enforce these drawing requirements strictly.
The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application. 37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).
If the new drawing has stippling or lining which is a feature of the mark and not intended to indicate color, then the applicant must insert a statement to that effect. 37 C.F.R. §2.37; TMEP §807.09(e).
If the applicant intended the lining or stippling to indicate color, then the applicant must insert a statement to that effect. The applicant also has the option of identifying color in the mark by providing a clear and specific description of the color and where it appears in the mark. If the applicant wishes to delete the lining from the mark, the applicant must submit a new black-and-white drawing of the mark that meets the requirements of 37 C.F.R. §2.52(a)(2)(i), along with a description of what the color is and where the color appears in the mark. 37 C.F.R. §2.52(a)(2)(v); TMEP §807.09(c).
Fee increase effective January 1, 2003
Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class. The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.
Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.
/William T. Verhosek/
Examining Atty/LO 114
703-308-9114x142
(Fax) 703-746-8114
ecom114@uspto.gov
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.