UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FIRST 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  76/617897

 

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

 

Search of Office Records

 

The examining attorney has searched the Office records and has found no similar registered or pending mark that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

However, the applicant’s mark cannot be approved for publication unless and until the following requirements are satisfactorily addressed:

 

Identification of Goods

 

The wording in the identification of goods is unacceptable as indefinite.  The applicant must specify the type/s of eyelashes and eyelash adhesives for which the mark is to be used.  The applicant may substitute the following wording, if accurate: 

 

               False eyelashes; artificial eyelashes; adhesives for affixing false eyelashes,

               in International Class 3.

 

               TMEP §§1402.01 and 1402.03.

 

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

 

Filing Basis Unclear

 

The applicant asserts use of the mark in commerce for eyelashes and eyelash adhesives and the applicant asserts that it has a bona fide intent to use the mark in commerce for the same goods.  The applicant must delete one basis or divide the goods between the two bases, as appropriate. An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

Signed Declaration Omitted

 

The applicant must submit a written statement attesting to the facts set forth in the application, and confirming that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  This statement must be dated and signed by a person authorized to sign under 37 C.F.R. §2.33(a), and verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §§2.34(a)(2)(i), (a)(3)(i) and (a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.  Please note that no signed verification was provided with the application.

 

To satisfy this requirement, applicant may add the following declaration paragraph at the end of its response, properly signed and dated:

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §§1051(b), 1126(d) or 1126(e), he/she believes the applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

Standard Character Claim

 

The applicant must clarify whether the applicant’s drawing is in standard character form.  Although the applicant asserts that the mark is in stylized form, the drawing appears to be in standard characters.  In a standard character drawing, the mark on the drawing consists of only words, letters or numbers, but does not include any designs or claims as to particular font style, size, or color.  A registration for a mark using a standard character drawing affords protection not only for the standard character version of the mark, but for any possible renderings of the mark, as long as those renderings do not contain any design elements; i.e., a registered standard character drawing of the mark gives protection for display on the specimens in any lettering style.  A special-form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering.  37 C.F.R. §2.52; TMEP §§807.03 et seq. 807.04 et seq.

 

If the applicant wishes to apply for the mark in standard characters, the applicant must include the following standard character drawing claim:

 

The mark is presented in standard characters without claim to any particular font style, size, or color.  37 C.F.R. §2.52(a).

 

Drawing does not Agree with Specimen

 

The mark as depicted on the drawing does not agree with the mark as it appears on the specimens, and clarification is required.  Specifically, the drawing displays the mark as EYE MAX, and the specimen depicts the mark as EYE-MAX.

 

The applicant must either:

 

(1)  submit a new drawing of the mark that agrees with the mark as it appears on the specimen and that is not a material alteration of the original mark; 37 C.F.R. §2.72(a); TMEP §§807.14 et seq;

 

(2)  submit a substitute specimen that shows use of the mark as it presently appears on the drawing and is accompanied by a statement that “the substitute specimen was in use in commerce at least as early as the filing date of the application,” verified with an affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09; or

 

(3)  delete the Section 1(a) use in commerce basis and retain only the intent-to-use basis under Section 1(b).

 

37 C.F.R. §2.51; TMEP §§807.12.

 

Disclaimer of Descriptive Wording

 

The applicant must disclaim the descriptive wording “eye” apart from the mark as shown because it merely describes the intended use of the applicant’s goods.  Because the applicant’s goods, eyelashes and eyelash adhesives, are applied to the eye, the wording “eye” is merely descriptive of the applicant’s goods and must be disclaimed.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The following is the accepted standard format for a disclaimer:

 

No claim is made to the exclusive right to use “eye” apart from the mark as shown.

 

Please note that a disclaimer of the word “eye” is unnecessary if the applicant amends the drawing to match the specimen (i.e. EYE-MAX).  A disclaimer is unnecessary in this instance because the hyphen renders the mark EYE-MAX unitary and a disclaimer of the descriptive wording is unnecessary in a unitary mark.

 

Description of Specimen

 

The nature of the applicant’s specimen is unclear, and clarification is required.  The applicant must provide a short description of the nature of the applicant’s specimen.  (e.g., labels affixed on applicant’s goods).  TMEP §904 et seq.

 

Responding to this Office Action

 

Please note that there is no required format or form for responding to this Office action.  However, the applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.

 

When responding to this Office action, the applicant must make sure to respond in writing to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then the applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register.  If there are other requirements, then the applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  The applicant must also sign and date the response.

 

 

 

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.

 

 

/Melissa Vallillo/

Examining Attorney

Law Office 113

Phone: (571) 272-5891

Fax: (571) 273-9113

 

 

 

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.