Offc Action Outgoing

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  76/630439

 

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

 

No Conflicting Marks

 

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

 

Identification and Classification of Services

 

The current wording used to describe the services needs clarification because “distribution” is a vague term that could include services in more than one class.  If applicant is providing distributorship services, applicant should clarify this for the record.  Applicant may adopt the following identification of services, if accurate: 

 

“Distributorship services in the field of skin care products and devices, in International Class 41.”

 

TMEP §1402.01.

 

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

 

For assistance with identifying goods or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Disclaimer

 

Applicant must disclaim the descriptive wording “MEDICAL” apart from the mark as shown.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The definition of MEDICAL is: “Of or relating to the study or practice of medicine.”  The American Heritage® Dictionary of the English Language, Fourth Edition Copyright © 2000 by Houghton Mifflin Company.  The term immediately describes and names the characteristics and features of the services, namely, it refers to the fact that the skin care products and devices are medical in nature.

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

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

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Specimen Unacceptable

 

Applicant must submit a substitute specimen showing use of the mark for the services specified in the application, because the specimen currently of record does not show use of the mark for any services identified in the application.  37 C.F.R. §2.56; TMEP §§904 and 904.01 et seq..  Applicant must also submit 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); TMEP §904.09.

 

The current specimen of record comprises what appears to be an advertisement brochure which shows the proposed mark in the advertisement of applicant’s skin treatment goods.  It does not show use of the mark in the advertisement of distributorship services.

 

 

 

Questions

 

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.

 

 

/John M. Gartner/

Trademark Examining Attorney

Law Office 102

(571) 272-9255

 

 

 

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.