UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Serial Number  76/484112

 

Search Results

 

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.

 

Duplicate Registrations Will Not be Issued

 

The applicant’s claim of ownership of Registration No. 2126771 is noted.  It is also noted that the mark in the claimed registration and the goods in the claimed registration are, at present, identical.  It also appears that the claimed registration issued pursuant to Section 44(e) of the Trademark Act, and that the present application is similarly based on Trademark Act Section 44(e). 

 

The Patent and Trademark Office will not issue duplicate registrations.  TMEP §703.  Thus, to the extent that the goods and bases for registration of the identical DIVILYS marks in the claimed registration and in the instant application remain the same, allowance of the mark is this application  will not be granted unless and until claimed Registration No. 2126771 is cancelled or surrendered. 

 

To the extent that claimed Registration No. 2126771 is cancelled or surrendered, the applicant’s claim of ownership of said will not be printed on any registration which may issue from this application.  TMEP §812.

 

Amendment to Identification of Goods in Class 5 is Required

 

The identification of the goods in International Class 3 is acceptable as stated.  In addition, the majority of the items in the identification of goods in Class are acceptable, as stated, for purposes of federal trademark registration.  However, the item “preparations for hygiene and care of the skin and the hair” in the Class 5 statement of goods is not acceptable because the nature of these preparations is not made clear. Amendment is required. TMEP §1402.01. 

 

The applicant may amend this wording to instead state as follows, if applicable:  Preparations for hygiene and care of the skin and the hair, namely, medicated creams, milks, emulsions, lotions, gels, balms and shampoos in International Class 5.

 

The applicant is advised that the Trademark Office Manual of Acceptable Identifications of Goods and Services, which includes the correct classifications of the listed goods and services, may be found online at http://www.uspto.gov.  The applicant may find this resource to be quite useful in framing an amended and acceptable identification of goods/services in this matter.

 

The applicant should bear in mind that brackets and parentheses shown in the identification manual are in the nature of directional signals, the significance of which is explained in the introduction to the Identification Manual.  Parentheses and brackets should not be included in the actual identification of goods or recitation of services adopted by the applicant. 

 

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(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods  that are not within the scope of the goods recited in the present identification.  In addition, once an item has been deleted from an identification of goods or recitation of services, it normally cannot be reinserted. 

 

Please also note that to the extent that the applicant maintains Section 44 as a basis for registration of the subject mark, the amended identification of goods may not exceed the scope of the goods covered in the corresponding home country application/registration.  In re Lowenbrau Munchen, 175 USPQ 178 (TTAB 1972); 37 C.F.R.

 

Multiple Class Application Requirements

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must 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(a); 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.  

Certificate or Copy of Certificate of Foreign Registration is Required

 

An application under Trademark Act Section 44(e), 15 U.S.C. §1126(e), must include a copy of a foreign registration from the applicant’s country of origin.  The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01 and 1004.

 

The application does not contain a copy of the foreign registration.  Therefore, the applicant must submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration.  If the foreign certificate of registration is not written in English, the applicant must provide an English translation.  The translator should sign the translation.  See TMEP §§1004.01 and 1004.01(b).

 

Statement of Significance of DIVILYS is Required

 

The applicant must state for the record whether the term DIVILYS has any meaning in another language, has an geographic or surname significance or has any significance in the relevant trade, other than as the applicant’s proposed or actual use as a source indicating mark.  37 C.F.R. Section 2.61(b).  If DIVILYS or its components have any such meaning, translation or significance, the applicant must provide a clear explanation of the same in the written application record.

 

 

/Barbara Loughran/

Trademark Examining Attorney

Law Office 113

(703) 308-9113  ext 208

 

 

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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.