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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/644651

 

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

 

NO CONFLICTING MARKS NOTED

 

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. Section 1052(d).  TMEP section 704.02.

 

 

 

 

 

UNACCEPTABLE IDENTIFICATION & CLASSIFICATION OF GOODS & SERVICES

 

In the identification of goods and services, the applicant must use the common commercial or generic names for the goods and services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §§1402.01 and 1402.03(a).

 

The application lists the goods and services, “cosmetics, namely self-tanning products, liquid makeup foundations, cream makeup foundations, facial highlighters, blemish concealers, mascaras, eyeliners, eye pencils, eye shadows, eyebrow pencils, eye makeup removers, blushes, rouges, powder and cream cheek colors, loose and pressed face powders, lipsticks, lip glosses, lip liner pencils, lip color crayons, nail care preparations, nail colors, nail top and base coats; fragrance products, namely, perfumes, colognes, bath and shower gels, body soaps, essential oils for personal use, bath oils and body oils, body sprays and mists; skin care products namely, cleansing creams and lotions, moisturizers, night creams, cleansing bars and facial soaps, hand creams, body creams, face creams, skin conditioners, oil controllers, oil absorbers, masks, gels, muds, buffing creams, facial and body scrubs; skin exfoliators, skin emollients, liquid talcs and body polishers” in International Class 3; “printed materials, namely product catalogues, leaflets, flyers, magazines, stationery, note cards, order forms, letterheads and business cards, pamphlets, brochures, books, manuals, newsletters, identification cards, paper labels, decals, date books; plastic and paper bags for packaging; printed instructional materials featuring business information in the fields of cosmetics and skin care” in International Class 16; “providing promotional materials to independent salespersons; dissemination of advertising materials; organization of promotional events for commercial or advertising purposes; telephone shop at home services; mail order catalog services; interactive retail store services rendered by means of the Internet; business development services, namely, providing start-up support for business of others; all the aforesaid services relating to cosmetics and skin care” in International Class 35; “glamour and beauty consulting and advisory services; providing information and advice in the field of skin care, beauty care and cosmetics and the dissemination of educational materials in connection therewith; educational services in the field of marketing, namely, organizing and arranging lectures and speeches to independent salespersons; creating and conducting work shops and seminar directed to topics of interests to women in the fields of business, professional development and personal growth, in the field of skin care, beauty care and cosmetics” in International Class 41; and “computerized on-line ordering services featuring cosmetics, skin care products and fragrances; retail on-line store and distributorship services featuring cosmetics, skin care products and fragrances; providing information and advice in the field of skin care, beauty care and cosmetics via the Internet” in International Class 42.  There is certain wording in the identification of goods and services that is indefinite. TMEP section 1402.01.  Further, certain services have been misclassified.  To follow are the examining attorney’s suggestions concerning the applicant’s identification and classification of goods and services.  The applicant may amend the application pursuant to the examining attorney’s suggestions, if accurate:

 

“Cosmetics, namely self-tanning preparations, liquid makeup foundations, cream makeup foundations, facial highlighters, non-medicated blemish concealers, mascaras, eyeliners, eye pencils, eye shadows, eyebrow pencils, eye makeup removers, blushes, rouges, powder and cream cheek colors, loose and pressed face powders, lipsticks, lip glosses, lip liner pencils, lip color crayons, nail care preparations, nail colors, nail polish top and base coats; fragrance products, namely, perfumes, colognes, bath and shower gels, body soaps, essential oils for personal use, bath oils and body oils, body sprays and body mists; skin care products namely, cleansing creams and cleansing ____________ (specify use of lotions, e.g., facial, body) lotions, skin moisturizers, night creams, cleansing bar soaps and facial soaps, hand creams, body creams, face creams, skin conditioners, oil controlling skin lotions, oil absorbing skin lotions, _________ (specify type of masks, e.g., body, beauty) masks, _____________ (specify type of gels, e.g., hair, sculpting, eye) gels, ____________ (must specify type of muds, e.g., facial, hair) muds, __________ (indicate type of buffing creams, e.g., nail, facial) buffing creams, facial and body scrubs; skin exfoliating __________ (indicate, e.g., lotions, creams, facial scrubs), skin emollients, liquid talcs for cosmetic use and body polishing ____________ (indicate, e.g., lotions, creams)” in International Class 3.

 

AND

 

“Printed materials, namely ____________ (must specify type of products referred to, e.g., beauty) product catalogs, leaflets about __________ (must indicate subject matter)[1], informational flyers featuring _____________ (must indicate subject matter)[2], magazines featuring ___________ (specify type, e.g., computers, travel, general interest), stationery, note cards, order forms, letterhead paper, business cards, pamphlets in the field of _____________ (indicate subject matter, e.g., skin care regimens), brochures about ____________ (indicate subject matter)[3], books in the field of _________ (indicate subject matter), manuals in the field of ___________ (specify area of use, e.g., instructional skin care), newsletters in the field of ___________ (indicate subject matter), identification cards [NOTE: “identification cards” is indefinite; may amend to “medical identification cards” or “paper identification tags”], paper labels, decals, date books; plastic and paper bags for packaging; printed instructional materials featuring business information in the fields of cosmetics and skin care” in International Class 16.

 

AND

 

“Preparing promotional materials for others to be provided to independent salespersons[4]; dissemination of advertising materials; organization of marketing promotional events for others for commercial or advertising purposes; providing home shopping services in the field of cosmetics and skin care products by means of telephone; mail order catalog services featuring cosmetics and skin care products; computerized interactive retail store services rendered by means of the Internet in the field of cosmetics and skin care products; business development services, namely, providing start-up support for business of others; computerized on-line ordering services featuring cosmetics, skin care products and fragrances; on-line retail store and distributorship services, all featuring cosmetics, skin care products and fragrances” in International Class 35.

 

AND

 

“Dissemination of educational materials of others in the field of skin care, beauty care and cosmetics; educational services, namely, organizing and arranging lectures and speeches in the field of skin care, beauty care and cosmetics to be provided to independent salespersons; arranging and conducting workshops and seminars in the field of skin care, beauty care and cosmetics and other topics of interest to women in the fields of business, professional development and personal growth” in International Class 41.

 

AND

 

“Providing information and advice via the Internet in the field of beauty, namely, information and advice concerning skin care, beauty care and cosmetics; beauty consulting and beauty advisory services; providing information and advice in the field of in the field of beauty, namely, information and advice concerning skin care, beauty care and cosmetics” in International Class 44.

 

It is strongly recommended that the applicant review the Office’s Trademark Manual of Acceptable Identifications and Classifications for Goods and Services which is available on-line at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

APPLICANT MAY NOT EXCEED SCOPE OF PRESENT IDENTIFICATION OF GOODS AND SERVICES

 

While an application may be amended to clarify or limit the identification of goods and services, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b).  TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the present identification.

APPLICANT MUST DISCLAIM DESCRIPTIVE WORDING

 

Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods or services. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP section 1213.01(b). 

 

A term is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).  The applicant has applied to register the mark “CAPTIVATING COLOR. POWERHOUSE SKIN CARE.” for “cosmetics, namely self-tanning products, liquid makeup foundations, cream makeup foundations, facial highlighters, blemish concealers, mascaras, eyeliners, eye pencils, eye shadows, eyebrow pencils, eye makeup removers, blushes, rouges, powder and cream cheek colors, loose and pressed face powders, lipsticks, lip glosses, lip liner pencils, lip color crayons, nail care preparations, nail colors, nail top and base coats; fragrance products, namely, perfumes, colognes, bath and shower gels, body soaps, essential oils for personal use, bath oils and body oils, body sprays and mists; skin care products namely, cleansing creams and lotions, moisturizers, night creams, cleansing bars and facial soaps, hand creams, body creams, face creams, skin conditioners, oil controllers, oil absorbers, masks, gels, muds, buffing creams, facial and body scrubs; skin exfoliators, skin emollients, liquid talcs and body polishers” in International Class 3; “printed materials, namely product catalogues, leaflets, flyers, magazines, stationery, note cards, order forms, letterheads and business cards, pamphlets, brochures, books, manuals, newsletters, identification cards, paper labels, decals, date books; plastic and paper bags for packaging; printed instructional materials featuring business information in the fields of cosmetics and skin care” in International Class 16; “providing promotional materials to independent salespersons; dissemination of advertising materials; organization of promotional events for commercial or advertising purposes; telephone shop at home services; mail order catalog services; interactive retail store services rendered by means of the Internet; business development services, namely, providing start-up support for business of others; all the aforesaid services relating to cosmetics and skin care” in International Class 35; “glamour and beauty consulting and advisory services; providing information and advice in the field of skin care, beauty care and cosmetics and the dissemination of educational materials in connection therewith; educational services in the field of marketing, namely, organizing and arranging lectures and speeches to independent salespersons; creating and conducting work shops and seminar directed to topics of interests to women in the fields of business, professional development and personal growth, in the field of skin care, beauty care and cosmetics” in International Class 41; and “computerized on-line ordering services featuring cosmetics, skin care products and fragrances; retail on-line store and distributorship services featuring cosmetics, skin care products and fragrances; providing information and advice in the field of skin care, beauty care and cosmetics via the Internet” in International Class 42. 

 

Accordingly, the wording “COLOR” and SKIN CARE” in the applicant’s mark is considered merely descriptive, as it describes a characteristic, function and feature of the relevant goods and services in that the goods consist of skin care products and beauty care products for providing color (e.g., lip color, nail color, cheek color) and the services relate to the same.

 

The applicant must insert a disclaimer of “COLOR” and “SKIN CARE” in the application.  Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.09(a)(i).  The applicant should note that a disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.  The appearance of the applied-for mark does not change.

 

A properly worded disclaimer should read as follows: 

 

No claim is made to the exclusive right to use “COLOR” and “SKIN CARE” apart from the mark as shown.

 

CHANGE OF ADDRESS (FOR INFORMATION ONLY)

 

Applicants may now file address change correspondence via a new form on TEAS.  Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this form, available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

 

 

 

/Sonya B. Stephens/

Trademark Attorney

Law Office 109

(571) 272-9352 phone

(571) 273-9109 fax*

*fax no. for official responses only

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.