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  77/110990

 

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.

 

However, before the mark can be approved for publication, the applicant must address the following procedural issues: 

 

Identification of Goods

 

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

The current wording “nail corrector pen” is indefinite as to the exact nature of the goods and must be clarified.  Additionally, the wording “acrylic artificial nail in liquid form” and “acrylic artificial liquid in power form” is indefinite and must be clarified.  Furthermore, it appears applicant misspelled the wording “powder.” 

 

Applicant may adopt the following identification of goods, if accurate:

 

International Class 003:  Adhesives for false eyelashes, hair and nails; False nails; Nail conditioner; Nail-polish corrector pen; False nails, namely, acrylic artificial nails in liquid form; False nails, namely, acrylic artificial nails in powder form; Lotions for strengthening the nails, Nail care preparations, Nail buffing preparations; Nail care preparations, namely, nail softeners; Nail cream; Nail enamel; Nail enamels; Nail glitter; Nail grooming products, namely, tips, glue, lacquer and glitter; Nail hardeners; Nail polish; Nail polish base coat; Nail polish remover; Nail polish removers; Nail polish top coat; Nail stencils; Nail strengtheners; Nail tips; Nail varnish for cosmetic purposes; Nail-polish removers.

 

TMEP §1402.01.

 

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.

 

Failure to Respond – Partial Abandonment

 

If applicant should fail to respond to this Office action within the six month time limit, then the following goods and/or services will be deleted from the application:  “Nail corrector pen; acrylic artificial nail in liquid form; acrylic artificial nail in power form.” 

 

The application will then proceed forward for the following goods and/or services only: “Adhesives for false eyelashes, hair and nails; False nails; Nail conditioner; Lotions for strengthening the nails, Nail care preparations, Nail buffing preparations; Nail care preparations, namely, nail softeners; Nail cream; Nail enamel; Nail enamels; Nail glitter; Nail grooming products, namely, tips, glue, lacquer and glitter; Nail hardeners; Nail polish; Nail polish base coat; Nail polish remover; Nail polish removers; Nail polish top coat; Nail stencils; Nail strengtheners; Nail tips; Nail varnish for cosmetic purposes; Nail-polish removers.”  37 C.F.R. §2.65(a).

 

Response Guidelines

 

Please note, there is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

Trademark Counsel

 

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

If the applicant has any questions or needs further assistance, please telephone the assigned examining attorney.

 

 

 

/Daniel J. Russell/

Trademark Examining Attorney

Law Office 105

Phone No. (571) 272-8479

Fax No. (571) 273-8479

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.