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  76/604817.  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.

 

Identification of Goods

The identification of goods is unacceptable because the term “total” in the wording “total sunscreen” is not a generic term.   In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §§1402.01 and 1402.03(a).  The applicant may wish to delete the term “total.”

 

The applicant may adopt the following identification, if accurate:

 

·        Sun and tanning cosmetics, namely, self tanning milk, pre-sunning milk, after sun moisturizer, anti-sun wrinkle creams, sunscreen, high protection creams and moisturizing tanning milk (Class 3)

 

TMEP section 1402.01.  The applicant should note that, although 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 1402.01.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

For additional information regarding acceptable wording, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the World Wide Web at .

Additional Classes of Goods 

One class of goods is suggested above.  If applicant were to include more than one class of goods/services, then the applicant must comply with each of the following:

 

(1)   The applicant must list the goods/services by class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

(2)   The applicant must submit a filing fee for each class of goods/services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.  The filing fee for adding classes to an application is as follows: $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and $375 per class, when the fees are submitted with a paper response.  Consolidated Appropriations Act, 2005, Pub. L. 108-447.

 

Disclaimer

The applicant must disclaim the exclusive right to use of the descriptive word SUN apart from the mark as shown.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP section 1213.08(a)(i).   This word is merely descriptive of the applicant's goods, which include sunscreen.

 

A computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.09(a)(i).  A properly worded disclaimer reads as follows:

 

            No claim is made to the exclusive right to use SUN apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).  A disclaimer does not remove the disclaimed matter from the mark.  It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.

 

Translation

The applicant must submit an English translation of the term TERRASSE in the mark.  37 C.F.R. §2.61(b); TMEP §809.  The attached copy of the entry taken from the ARTFL Project On-Line French-English Dictionary shows that “terrasse” means “terrace.”  The following translation statement is suggested: 

 

• The English translation of the word TERRASSE in the mark is “terrace.”

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

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.

 

 

/Leigh Caroline Case/

Trademark Attorney, Law Office 105

(571) 272-9140

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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