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.uspto.gov/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/652688

 

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

 

Search Results

 

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.

 

Classification

 

Applicant must correct the classification of the goods in the application and amend the application to classify them in the appropriate International Class. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

Identification of Goods

 

The wording in the identification of goods needs clarification because it is too broad and could include goods classified in other international classes. Applicant may adopt the following identification of goods, if accurate: 

 

Class 3

COLOR COSMETICS, NAMELY-- LIPSTICKS, LIPSTICK LINERS, LIP GLOSS, EYELINERS, EYE SHADOWS, BLUSHERS, FACE POWDERS, FOUNDATION, MASCARAS, NAIL POLISHES, EYEBROW PENCILS; SKIN TREATMENT PRODUCTS, NAMELY-- CLEANSERS, TONERS, MOISTURIZERS, EYE CREAMS, HAND AND BODY LOTIONS, BODY AND SHOWER GELS, AND FACIAL SOAP, NAIL CARE PREPARATIONS, AND NAIL POLISH REMOVERS; FRAGRANCE PRODUCTS, NAMELY-- COLOGNE, PERFUME, TOILET WATER, SCENTED SOAPS, BODY POWDERS, BATH OILS; SUN SCREEN PREPARATIONS; HAIR CARE PRODUCTS, NAMELY-- HAIR COLORING, HAIR BLEACHES, HAIR LIGHTENERS, HIGHLIGHTING PREPARATIONS; SHAMPOOS; CONDITIONERS, HAIR COLOR STAIN REMOVERS, HAIR GELS, MOUSSES, HAIR SPRAYS AND STYLING LOTIONS; AND HAIR CARE PREPARATIONS, NAMELY-- HAIR BODY AND ROOT LIFT GELS; bath sets comprised of bath gels, bath foams and bath oils;

 

Class 14

Bracelets, namely, silicone bracelets and beaded bracelets;

 

Class 18

Sleepover trolley, namely, cosmetic cases sold empty; stuffed fleece satchels;

 

Class 20

Plush pillows; sleeping bags;

 

Class 21

Resin hairbrush; shampoo and conditioner bottles sold empty;

 

Class 24

Fleece blanket throws; and

 

Class 25

Fuzzy slippers; booties.

 

TMEP §1402.01.

 

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

 

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.

 

Combined Applications

 

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 (current fee information should be confirmed at http://www.uspto.gov).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Disclaimers

 

Applicant must disclaim the descriptive wording “AROMATHERAPY” apart from the mark as shown because it merely describes a feature/characteristic of the applicant’s goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  Please see the dictionary definition below.

 

a·ro·ma·ther·a·py

 
a·ro·ma·ther·a·py (e-ro´me-thèr¹e-pê) noun

plural a·ro·ma·ther·a·pies

The use of selected fragrant substances in lotions and inhalants in an effort to affect mood and promote health[1]

 

The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark.  Trademark Act Section 6(a), 15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a).  If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect.  The appearance of the applied-for mark does not change.

 

Please 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 following cases explain the disclaimer requirement more fully:  Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977).

 

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 “AROMATHERAPY” apart from the mark as shown.

 

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

Status Check

 

To check status information, please use either http://tarr.uspto.gov, or call 703-305-8747 (Monday-Friday, 6:30 a.m. to 12 midnight, EST).  If additional information regarding the status of an application or registration is required, callers may telephone the Trademark Assistance Center (TAC) at (571) 272-9250 or (800) 786-9199 and request a status check.  TAC is open from 8:30 a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on holidays.

Copies of Documents 

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at: http://portal.uspto.gov/external/portal/tow.  Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access.  This conversion process is expected to take several years.  Downloads are converted into PDF format and may be viewed with any PDF viewer, including the free Adobe Reader.

New Money Saving Program

 

On July 18, 2005, the USPTO introduced a new version of the application for a Trademark/Service mark, Principal Register.  The TEAS Plus form has a lower filing fee of $275 per class of goods and/or services (the TEAS form fee is $325 per class of goods and/or services), but has stricter requirements than the TEAS form. 

Conclusion

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Ingrid C. Eulin/

Ingrid Eulin

Law Office 111

(571) 272-9380

 

 

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.uspto.gov/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.uspto.gov/external/portal/tow.

 

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

 

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