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  77/003840

 

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

 

Trademark Act Section 2(d) Search Results – No Conflicting Marks Found

 

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.

 

Amended Identification of Goods Required

 

In a preliminary amendment filed on October 24, 2006, the applicant amended the identification of goods to the following: “nail enamel removers, eyebrow pencils, liquid rouge, lipsticks, mascara; mask pack, massage gel, massage oil, enamel for manicure, hair oil, cosmetic bath oil, cheek colors, blushers, cosmetic sun milk, sunscreen lotions, sunscreen creams, cosmetic sun oils, cosmetic skin milk lotions, cosmetic skin fresheners, eyeliners, eye make-up removers, eye shadow, common lotions, lip brighteners, cold creams, cleansing cream, foundation creams, cosmetic face powder, skin whitening creams, hand creams, perfumes, hair gel, hair lotions, hair mousse, hair conditioners, hair creams, make-up powder, cosmetic pencils” in International Class 003.

 

The examining attorney has determined that the amended identification of goods is within the scope of the original identification of goods.  Therefore, all requested changes in this Office Action reference the NEW identification of goods as proposed in the Preliminary Amendment.

 

As such, some of the wording in the identification of goods is indefinite and/or broad and may include goods in several international classes.  The applicant must address the following issues and amend the identification of goods accordingly.

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then such terms must be followed by the word “namely” and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

(1)    The wording “mask pack” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  TMEP §1402.01.  The applicant may substitute the following wording, if accurate: “facial mask” or “beauty mask.”

 

(2)    The wording “enamel for manicure” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear.  TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “nail enamel for use in manicures.”

 

(3)    The wording “cheek colors” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear.  TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “blush.”

 

(4)    The wording “cosmetic skin fresheners” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear and may include goods in several international classes.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  TMEP §1402.01.  The applicant may substitute the following wording, if accurate: “cosmetic skin fresheners, namely {list specific fresheners, using common commercial names, e.g., chemical peels for skin}.”

 

(5)    The wording “common lotions” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear and may include goods in several international classes.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  TMEP §1402.01.  The applicant may substitute the following wording, if accurate: “common lotions, namely {list specific lotions, using common commercial names, e.g., body lotion, bath lotion}.”

 

(6)    The wording “lip brighteners” in the identification of goods is indefinite and must be clarified because the nature of the goods in not clear.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  TMEP §1402.01.  The applicant may substitute the following wording, if accurate:  “lip brighteners, namely, {list specific types of brighteners, using common commercial names, e.g., lip gloss, lip cream}.”

 

To summarize, the applicant may adopt the following identification of goods:

 

• “Nail enamel removers, eyebrow pencils, liquid rouge, lipsticks, mascara; facial masks, massage gel, massage oil, nail enamel, hair oil, cosmetic bath oil, blush, blushers, cosmetic sun milk, sunscreen lotions, sunscreen creams, cosmetic sun oils, cosmetic skin milk lotions, cosmetic skin fresheners, namely, {list goods using common commercial names}, eyeliners, eye make-up removers, eye shadow, common lotions, namely, {list goods using common commercial names}, lip brighteners, namely, {list goods using common commercial names}, cold creams, cleansing cream, foundation creams, cosmetic face powder, skin whitening creams, hand creams, perfumes, hair gel, hair lotions, hair mousse, hair conditioners, hair creams, make-up powder, cosmetic pencils” in International Class 003.

 

For assistance with identifying and classifying goods and/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.

 

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.

 

The applicant has paid for goods in ONE international class.  If the applicant wishes to add an additional class to the application that is within the scope of the current identification, please see the section entitled “Multiple Class Requirements” listed below.

 

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

 

The filing fee for adding classes to an application is as follows:

 

(1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and

 

(2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

Applicant May Proceed Solely on Intent-to-Use Basis

 

If applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then applicant should so advise the trademark examining attorney.  TMEP §§806.02(f) and 806.04(b).  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  However, while the application may be approved for publication, the mark will not register until after an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration.  Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed.  TMEP §§1004.01 and 1004.01(b).

 

Certificate of Registration WILL be Required

 

If applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), then applicant must submit a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin.  Applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01, 1003.03 and 1004.

 

If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

Response

 

If the 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.

 

 

/Laurie R. Kaufman/

Trademark Examining Attorney

Law Office 103

Ph: 571.272.8913

Fx: 571.273.9103

 

 

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.