| To: | Healthpoint, Ltd. (bwiese@dbcllp.com) |
| Subject: | TRADEMARK APPLICATION NO. 77007258 - MVE - N/A |
| Sent: | 4/11/2008 8:21:26 PM |
| Sent As: | ECOM101@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/007258
MARK: MVE
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Healthpoint, Ltd.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 4/11/2008
This Office action is in response to applicant’s communication filed on February 20, 2008.
Refusal Withdrawn:
The following refusal is now withdrawn: (1) Sections 1, 2, and 45 Refusal – Mark Identifies Process/System. TMEP §§713.02, 714.04.
Requirement Withdrawn:
The following requirement is withdrawn because the applicant has filed an acceptable substitute specimen for International Class 005: (1) Specimen Unacceptable as to International Class 005. TMEP §§713.02, 714.04.
Requirement Maintained and Continued:
The following requirement is maintained and continued: (1) Specimen Unacceptable as to International Class 003. TMEP §§713.02, 714.04. Please see below for an additional requirement made in response to applicant’s communication filed on February 20, 2008.
New Specimen Required - Specimen Unacceptable:
THIS REQUIREMENT APPLIES ONLY TO INTERNATIONAL CLASS 003.
The specimens are not acceptable because they do not show the applied-for mark used in connection with any of the goods and/or services specified in the application. An application must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services based on Section 1(a) in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a), 1301.04.
In this case, the substitute specimens filed on February 20, 2008 are not acceptable because they do not show the applicant’s mark on the applicant’s applied-for goods or on the packaging for the applicant’s applied-for goods. Specifically, the applicant applied for, “Non-medicated skin care preparations featuring slow-release softening and moisturizing characteristics” in International Class 003. However, the substitute specimens submitted on February 20, 2008 show the applicant’s mark on what appears to be medicated skin care preparations. Specifically, the first specimen states, “6% salicylic acid (cream)”. The second specimen states, “6% Salicylic acid Lotion”. The attached Internet website evidence shows that salicylic acid is defined as, “a keratolytic and caustic, used to treat a variety of skin conditions, such as dandruff, seborrheic dermatitis, acne, and psoriasis, and to remove calluses, corns, and warts. Its salts are the salicylates.” Further, the attached Internet website evidence shows that creams containing salicylic acid are considered medicated creams. Because the applicant’s applied-for International Class 003 goods are non-medicated, the substitute specimens submitted on February 20, 2008 are not acceptable.
The original specimen and the specimen submitted on July 30, 2007 are not acceptable because they do not show the applicant’s mark as a source identifier for, “Non-medicated skin care preparations featuring slow-release softening and moisturizing characteristics.” Specifically, the original specimen submitted for International Class 003 states, “With its patented Multivesicular Emulsion (MVE) formulation, CeraVe Moisturizing Lotion helps restore and maintain the skin’s natural protective barrier function. MVE works by trapping ingredients within multi-layered vesicles that are slowly released layer by layer throughout the day penetrating deep into the skin to moisturize and nourish.” The specimen submitted on July 30, 2007 also states, “Its patented MVE formulation releases ceramides and other essential ingredients throughout the day, so they penetrate deep into the skin to hydrate and nourish.” The wording MVE does not appear to be a source indicator for the applicant’s lotion, instead, the wording appears to identify a component part of the applicant’s lotion. Therefore, the applicant’s specimens do not show the applicant’s mark on the applicant’s applied-for goods, or on packaging for the applicant’s applied-for goods. Additionally, the wording MVE is buried in the text on the original specimen and on the July 30, 2007 substitute specimen and would not be perceived as a trademark by purchasers.
Therefore, applicant must submit the following:
(1) A substitute specimen showing use of the mark for each class of goods and/or services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale. TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has 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 filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2), 2.35(b)(1); TMEP §806.03(c).
Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
Declaration Information:
Two sample declarations are shown below. The first is to be used if the applicant submits a substitute specimen. The second is to be used if the applicant does not submit a substitute specimen but amends the application filing basis to Section 1(b) (intent to use in commerce).
The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:
The undersigned being warned that willful false statements and the like 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 registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; 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)
The following is a sample declaration under 37 C.F.R §2.20 with a supporting statement for amending the application filing basis to Section 1(b) (intent to use in commerce):
Applicant has 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 filing date of the application. 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 the facts set forth in the application are true; 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)
Current Filing Basis Unclear:
THIS REQUIREMENT APPLIES ONLY TO INTERNATIONAL CLASS 003.
The applicant’s current filing basis is unclear. Specifically, in the applicant’s incoming February 20, 2008 response, applicant has indicated that the current filing basis for International Class 003 is Section 1(a) and Section 44(e). However, applicant has not provided any of the documentation required for filing pursuant to Section 44(e).
An application based on a foreign registration must include the following:
(1) A true copy, a photocopy, a certification, or a certified copy of a registration of the mark in applicant’s country of origin. A copy of a foreign registration must be a document issued to an applicant by or certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. Applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party or extend reciprocal registration rights to nationals of the United States by law. TMEP §1002.01.;
(2) An English translation of the foreign registration if the foreign certificate of registration is not written in English. The translator should sign the translation. TMEP §1004.01(b).; and
(3) The following statement, verified in an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods or services as of the application filing date.”
15 U.S.C. §1126(b), (e); 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
Applicant must clarify the current filing basis for the record. If applicant inadvertently selected Section 44(e), applicant may request the Section 44(e) basis be deleted from the record.
Partial Abandonment Advisory:
If applicant does not respond to this Office action within the six-month period for response, then International Class 003 will be deleted from the application and the application will proceed forward for International Class 005 only. 37 C.F.R. §2.65(a).
TEAS Plus Advisory:
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html: (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis. If any of these documents are filed on paper, they must be accompanied by a $50 per class fee. 37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i). Telephone responses will not incur an additional fee. NOTE: In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee. 37 C.F.R. §2.23(a)(2).
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.
/Colleen Dombrow/
Trademark Attorney
Law Office 101
Direct Dial: (571) 272-8262
Facsimile: (571) 273-9101
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.
