Offc Action Outgoing

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  76/592861

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

INDEFINITE IDENTIFICATION OF GOODS

 

The identification of goods is unacceptable as indefinite because it states goods in multiple classes without delineating them by class and uses broad terms.  The specific types of solutions must be stated.  (e.g., lotions, creams, etc.)  Otherwise, the term “preparations” will suffice in place of “solutions”. It should also be clear that the goods are for suntanning. The specific types of apparatus must be stated and correctly classified.  “Apparatus for applying tanning solutions” could imply goods in multiple classes.  For example, brushes for this purpose would fall in class 21. The applicant may adopt the following identification, if accurate: 

 

COSMETICS; COSMETICS FOR SUNTANNING; SUNTANNING CREAMS, LOTIONS AND PREPARATIONS;  SPRAY-ON SUNTANNING PREPARATIONS. In class 3.

 

TANNING BEDS; TANNING LAMPS. In class 11.

 

BRUSHES FOR APPLYING SUNTANNING PREPARATIONS.  In class 21.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

MULTIPLE CLASS REQUIREMENTS

 

The application identifies goods that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) 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.  37 C.F.R. §2.6(a)(1). 

 

The applicant must list the goods by international class number in ascending numerical order.  TMEP §§801.01(b) and 1403.01.

 

COLOR CLAIM

 

Applicant must specify the colors that are claimed as a feature of the mark using the following format:  “The color(s) black, orange, and yellow <is/are> claimed as a feature of the mark.”  37 C.F.R. §2.52(b)(1).  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  Exam Guide 01-03, section I.B.1.

 

Currently, applicant just claims that color is a feature of the mark, without stating what colors are features of the mark.

 

The separate explanation of where the colors appear is acceptable and should not be changed.

 

SEARCH CLAUSE

 

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.

 

If the applicant has any questions about this Office action, please telephone the assigned examining attorney.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Steven Foster/

Steven Foster, Trademark Attorney

Law Office 106

(571) 272-9318

Fax number for the Law Office: (571) 273-9106

 

 

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.