UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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: 6/9/2008

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

OTHER REQUIREMENTS:

Although the examining attorney has not refused registration, the applicant must respond to the following issues.

 

NAME OF AN INDIVIDUAL

Applicant must clarify whether the name in the mark identifies a particular living individual. 

 

If the name in the mark identifies a particular living individual, then applicant must submit the following: 

 

(1)   a signed, written consent from that individual, authorizing applicant to register the name as a trademark with the USPTO; and

 

(2)   a statement that “GIANNA BIANCHI identifies a living individual whose consent is of record.”

 

However, if the name in the mark does not identify a living individual, then applicant must submit a statement that “GIANNA BIANCHI does not identify a living individual.”  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206.

 

DISCLAIMER REQUIRED

Applicant must disclaim the descriptive wording “HOME COLLECTION” apart from the mark as shown because it merely describes applicant’s goods which consist of a COLLECTION of products, a line of goods, made specifically for the HOME.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). 

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).  Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

 

The following is the accepted format for a disclaimer:

 

            No claim is made to the exclusive right to use “HOME COLLECTION” apart from the mark as shown.

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

CLASSIFICATION AND IDENTIFICATION OF GOODS

The identification of goods is indefinite and must be clarified because much of the wording is too vague.  See TMEP §1402.01.  As a result, applicant may have identified goods in more classes than the four listed in the application.  

 

In Class 8, the wording “sets” is too vague.  Applicant must specify the common commercial names of the goods that make up the “sets” or delete this term.  Furthermore, “hair brushes” are in Class 21.  “Electrically heated hair brushes” are in Class 9.  “Massagers” are in Class 10, not Class 8.  Applicant is required to either add Class 10 to this application or delete “massagers” from the identification of goods. 

 

In Class 11, the wording is confusing.  The examiner suggests simplifying.

 

In Classes 21 and 25, most of the wording is too vague.  See below for specific suggestions.

 

Applicant may adopt the following identification, if accurate:

 

Class 8:            HAIR CLIPPERS

 

Class 10:         ELECTRIC AND NON-ELECTRIC HAND HELD BODY MASSAGERS

 

Class 11:          Battery operated table top WATER fountains

 

Class 21:          CONTAINERS FOR HOUSEHOLD USE; kitchen utensils, NAMELY, [must specify common commercial names of the “utensils”, e.g., spatulas, strainers, graters, sieves, etc.]; combs; sponges FOR HOUSEHOLD PURPOSES; brushes, NAMELY, [must specify the purpose of the “brushes,” e.g., pet brushes, nail brushes, lip brushes, lint brushes, etc.]; BEVERAGE glassware; porcelain goods, NAMELY, [must specify the common commercial names of the goods, e.g., knobs, mugs, works of art]; earthenware, NAMELY, [specify the common commercial names of the goods, e.g. mugs, figures, jars for jams, etc.]; glass coasters; HAIR BRUSHES

 

Class 25:          Clothing, NAMELY, [must further specify the common commercial names of the clothing items, e.g., shirts, hats, pants, etc.]; footwear; headgear, namely, [must specify the exact nature of the “headgear,” e.g., hats, caps, etc.]; comfort slippers

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification(s) as indicated above.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services that are classified in at least five classes; however, the fees submitted are sufficient for only four class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

FEES FOR ADDING CLASSES – PAPER AND TEAS

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; or

 

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

 

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

 

REQUIREMENTS FOR A COMBINED APPLICATION - SECTION 1(b) or 44(e)

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; 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).

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

 

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

 

Wendy B. Goodman, Esq.

/Wendy B. Goodman, Esq./

Trademark Attorney

Law Office 109

(571) 272-9276 (phone)

wendy.goodman@uspto.gov

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 6/9/2008 FOR

APPLICATION SERIAL NO. 77398204

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77398204&doc_type=OOA&mail_date=20080609 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 6/9/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.