UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/608849

 

This letter responds to applicant’s communication filed on 9/28/05.

 

The following requirement(s) has been satisfied and is now withdrawn:  (1) standard character claim.  TMEP §714.04. 

 

Applicant has responded to the requirement for an amended identification of goods; however, the identification continues to contain indefinite language, identifies new language that is properly classified in additional classes, and contains language that is outside the scope of the original idnetification.  Therefore, the refusal of registration under Section 2(d) is maintained until applicant responds to the following requirements regarding the identification of goods:

 

INCORRECT CLASSIFICATION

 

Applicant classified the goods and/or services “makeup pencil sharpeners” in International Class 3 AND Class 21; however, the correct classification is International Class 16.  Applicant must either delete these goods and/or services or add International Class 16 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Applicant classified the goods and/or services “eyelash curlers” in International Class 21; however, the correct classification is International Class 8.  Applicant must either delete these goods and/or services or add International Class 8 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Applicant classified the goods and/or services “makeup mirrors” in International Class 21; however, the correct classification is International Class 20.  Applicant must either delete these goods and/or services or add International Class 20 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Applicant classified the goods and/or services “tweezers” in International Class 21; however, the correct classification is International Class 8.  Applicant must either delete these goods and/or services or add International Class 8 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

AMENDMENT OF RECITATION OF SERVICES REQUIRED in International Class 21

 

The wording “nail trimming tools” in the identification of services needs clarification.  Applicant must indicate the common commercial name of a specific type of nail trimming tool.  Applicant may change this wording to “Nail clippers,” in International Class 8, if accurate.  TMEP §1402.01.  The following are also acceptable amendments:  “Nail scissors,” and “Nail files.”  If applicant adopts any of the suggested amendments of the goods and/or services, then applicant must amend the application to add International Class 8.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

 

The wording “eyebrow grooming tools” in the identification of services needs clarification.  Applicant must indicate the common commercial name of a specific type of eyebrow grooming tool.  Applicant may change this wording to “Eyebrow brushes,” in International Class 21, if accurate.  TMEP §1402.01. 

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

PARTICULAR WORDING EXCEEDS SCOPE OF GOODS IN ORIGINAL APPLICATION

 

The proposed amendment to the identification cannot be accepted because the wording "makeup cases" refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this wording should be deleted from the identification.

 

The proposed amendment to the identification cannot be accepted because the wording "brush cases" refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this wording should be deleted from the identification.

 

The proposed amendment to the identification cannot be accepted because the wording "makeup brush cleaners" refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of goods and/or services may be amended to clarify or limit the goods and/or services, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this wording should be deleted from the identification.

 

MULTIPLE-CLASS REQUIREMENTS

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

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

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

/MED/

Michelle E. Dubois

Trademark Examining Attorney

Law Office 107

(571) 272-5887

 

 

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 has been 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.