Offc Action Outgoing

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: 10/1/2009

 

 

 

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

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no similar registered mark that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

Potential Section 2(d) Refusal – Likelihood of Confusion

 

The filing date of pending Application Serial No. 77777728 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

If the mark in the potentially conflicting prior-filed application has been assigned to applicant, applicant can provide evidence of ownership of the mark to avoid a possible refusal on the basis of likelihood of confusion under Trademark Act Section 2(d).  See 15 U.S.C. §1052(d); TMEP §812.01. 

 

Applicant can provide evidence of ownership of the mark by satisfying one of the following:

 

(1)  Record the assignment with the Office’s Assignment Services Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;

 

(2)  Submit copies of documents evidencing the chain of title; or

 

(3)  Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “Applicant is the owner of Application Serial No. 77777728.” 

 

See 15 U.S.C. §1060; 37 C.F.R. §§3.25, 3.73; TMEP §§502.02(a), 812.01.

 

Merely recording a document with the Assignment Services Branch does not constitute a response to an Office action.  TMEP §503.01.

 

Although the applicant need not address the above potential refusal at this time, applicant must respond to the requirements set forth below.

 

Identification and Classification of Goods

 

Applicant’s goods are identified as:

 

Tweezers; Nail implements; Cosmetic brushes; Cosmetic implements; Cosmetic applicators; make-up applicators; make-up implements; beauty products; beauty implements; make-up; cosmetics; cosmetic products; make-up products; hair care products; skin care products; Jewelry; mirrors; hair accessories; false eye lashes; false nails; cosmetic bags; nail polish remover; bath and shower accessories, namely, loofahs, brushes and gloves; cosmetic applicators , namely, wedges and pads; hairbrushes; cotton balls; facial wipes; massage oils; facial cleansers; facial creams; facial lotions; facial washes; skin clarifiers; skin cleansers; skin creams; skin conditioners; skin lotions; skin moisturizer; skin soaps; skin toners; hair dressings for men; hair conditioner; hair shampoo; hair gels; hair care preparations; hair cleaning preparations; hair styling preparations; hair creams; beauty creams for body care; body and beauty care cosmetics; body and beauty care preparations; body creams; body cream soap; body lotions; body oils; body powder; body scrub; body sprays; cosmetic preparations for body care; cosmetic products for the face and body, namely, creams, lotions, gels, mists, scrubs and oils; deodorants for body care; body spray used as a personal deodorant and as fragrance; deodorant for personal use; face and body beauty creams; face and body creams; liquid soaps for hands, face and body; hair lotions; lotions for face and body care; make-up products for the face and body; non-medicated body soaps; soaps for body care; toning lotion, for the face, body and hands; cologne water; toilet water; bath beads; bath crystals; shower and bath foams; shower and bath gels; bath lotion; bath oils; bath powder; bath salts; bath soaps in liquid, solid or gel form; mineral salt in the nature of bath salts not for medical purposes; hair tonics; hair cleansers; hair waving lotion; scented oils used to produce aromas when heated; aromatherapy creams; aromatherapy lotions; aromatherapy oils; essential oils for personal use; body and beauty care cosmetics; cosmetic cleansing creams; cosmetic creams; cosmetic oils; cosmetic preparations for skin renewal; cosmetic preparations and products for skin and body care, namely, creams, lotions, gels, mists, scrubs and oils; cosmetic products for the face and body, namely, creams, lotions, gels, mists, scrubs and oils; cosmetic soaps; face creams for cosmetic use; shaving preparations; shaving balms; make-up products for the face and body; make-up removers; perfumes; beauty masks; skin masks; beauty serums; skin care products, namely, non-medicated skin serum; lip balm; balms for skin; bath milks; beauty milks; face and body milks; cleansing milks; cosmetic milks; moisturizing milks; make-up removing milk, gel, lotions and creams; eye compresses for cosmetic purposes; after sun creams; after sun lotions; non-medicated sun care preparations; sun care lotions; sun creams; after-shave balms; after-shave creams; after-shave emulsions; after-shave gel; after-shave lotions, in Class 3.

 

Applicant classified the goods “Tweezers” in International Class 3; however, the correct classification is International Class 8.  Applicant must either delete these goods or add International Class 8 to the application.  37 C.F.R. §§2.32(a)(7),  2.85; TMEP §§1401.02(a), 1401.04(b).

 

The wording “Nail implements” in the identification of goods is indefinite and must be clarified because the applicant must specify the goods by common commercial name, such as “nail files” and “nail clippers.”  See TMEP §1402.01.  The applicant must also specify whether these implements are for manicures or pedicures.  Additionally, these goods must be classified in Class 8.

 

Applicant classified the goods “cosmetic brushes” in International Class 3; however, the correct classification is International Class 21.  Applicant must either delete these goods or add International Class 21 to the application.  37 C.F.R. §§2.32(a)(7),  2.85; TMEP §§1401.02(a), 1401.04(b).

 

The wording “cosmetic implements; cosmetic applicators; make-up applicators; make-up implements” in the identification of goods is indefinite and must be clarified because this wording is broad enough to include goods in more than one international class.  See TMEP §1402.01.  The applicant must list the goods by common commercial name, such as “cosmetic spatulas for use with depilatory preparations” or “foam applicator sticks for applying cosmetics,” and classify them in the appropriate class.  “Cosmetic spatulas for use with depilatory preparations” and “foam applicator sticks for applying cosmetics,” are classified in Class 21.

 

The wording “beauty products; beauty implements;” in the identification of goods is indefinite and must be clarified because this wording is broad enough to include a wide variety of goods in several international classes, especially Classes 3, 8, and 21.  See TMEP §1402.01.  The applicant must specify these goods by common commercial name and classify them in the appropriate class.  Because the applicant’s goods already include a vast array of beauty products and implements, no additional suggestions are provided for this wording.

 

The wording “cosmetic products” in the identification of goods is indefinite and must be clarified because this wording is broad enough to include goods in other international classes, such as nail files in Class 8 and cosmetic brushes in Class 21.  See TMEP §1402.01.  The applicant must specify the goods by common commercial name and classify them in the appropriate class.  Similarly, the wording “make-up products; hair care products; skin care products” is broad enough to include goods in other international classes.  Because the applicant’s goods already include a vast array of cosmetic, make-up, hair care, and skin care products, including “cosmetics” and “make-up,” no additional suggestions are provided for this wording.

 

Applicant classified the goods “Jewelry” in International Class 3; however, the correct classification is International Class 14.  Applicant must either delete these goods or add International Class 14 to the application.  37 C.F.R. §§2.32(a)(7),  2.85; TMEP §§1401.02(a), 1401.04(b).

 

Applicant classified the goods “mirrors” in International Class 3; however, the correct classification is International Class 20.  Applicant must either delete these goods or add International Class 20 to the application.  37 C.F.R. §§2.32(a)(7),  2.85; TMEP §§1401.02(a), 1401.04(b).

 

The wording “hair accessories” in the identification of goods is indefinite and must be clarified to specify the goods by common commercial name, such as “twisters” and “claw clips.”  See TMEP §1402.01.  Additionally, these goods must be classified in Class 26.

 

Applicant classified the goods “cosmetic bags” in International Class 3; however, the correct classification is International Class 18.  Applicant must either delete these goods or add International Class 18 to the application.  37 C.F.R. §§2.32(a)(7),  2.85; TMEP §§1401.02(a), 1401.04(b).  The applicant must also clarify these goods are “sold empty.”  These goods are classified in Class 3 only when they are part of a kit in which the primary goods are cosmetics and/or toiletries.

 

The wording “bath and shower accessories, namely, loofahs, brushes and gloves” in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Specifically, the applicant must specify whether the “loofahs” are soaps or sponges.  Soaps are classified in Class 3, but sponges are classified in Class 21.  Additionally, the applicant must classify these goods in the proper classes, “bath brushes” are classified in Class 21, but “bath gloves” are classified in Class 24.

 

The wording “cosmetic applicators , namely, wedges and pads” in the identification of goods is indefinite and must be clarified because the applicant must specify the nature of the “wedges.”  See TMEP §1402.01.  Cosmetic pads are classified in Class 3, but facial sponges for applying makeup are classified in Class 21.

 

Applicant classified the goods “hairbrushes” and “cotton balls” in International Class 3; however, the correct classification is International Class 21.  Applicant must either delete these goods or add International Class 21 to the application.  37 C.F.R. §§2.32(a)(7),  2.85; TMEP §§1401.02(a), 1401.04(b).

 

The wording “facial wipes” in the identification of goods is indefinite and must be clarified because this wording is broad enough to include goods in several international classes.  See TMEP §1402.01.  If the goods are pre-moistened with a cleaning substance, the goods are classified in Class 3.  If the goods are pre-moistened with a medicated substance, the goods are classified in Class 5.  If the goods are not impregnated with chemicals or compounds and are made of paper, they are classified in Class 16.  If they are made of textiles, they are classified in Class 21.

 

The wording “body and beauty care preparations” in the identification of goods is indefinite and must be clarified because this wording is broad enough to include goods in Class 5.  See TMEP §1402.01.  Applicant must specify the goods by common commercial name and classify them in the appropriate class.  Because the applicant’s goods already include a vast array of body and beauty care preparations, no additional suggestions are provided for this wording.

 

The wording “make-up products for the face and body” (two instances) in the identification of goods is indefinite and must be clarified because this wording is broad enough to include goods in other international classes, such as nail files in Class 8 and cosmetic brushes in Class 21.  See TMEP §1402.01.  The applicant must specify the goods by common commercial name and classify them in the appropriate class.  Because the applicant’s goods already include a vast array of make-up products, including “make-up,” no additional suggestions are provided for this wording.

 

The applicant should delete the second instances of “body and beauty care cosmetics” and “cosmetic products for the face and body, namely, creams, lotions, gels, mists, scrubs and oils.”

 

The wording “balms for skin” in the identification of goods is indefinite and must be clarified to specify whether these goods are “medicated” or “non-medicated.”  See TMEP §1402.01.  If the goods are “non-medicated,” they are properly classified in Class 3.  If they are “medicated,” they must be classified in Class 5.

 

To summarize, applicant may adopt any or all of the following identifications of goods, if accurate:

 

Make-up; cosmetics; false eye lashes; false nails; nail polish remover; bath and shower accessories, namely, loofah soaps; cosmetic applicators, namely, cosmetic pads; facial wipes, namely, pre-moistened cosmetic wipes; massage oils; facial cleansers; facial creams; facial lotions; facial washes; skin clarifiers; skin cleansers; skin creams; skin conditioners; skin lotions; skin moisturizer; skin soaps; skin toners; hair dressings for men; hair conditioner; hair shampoo; hair gels; hair care preparations; hair cleaning preparations; hair styling preparations; hair creams; beauty creams for body care; body and beauty care cosmetics; body creams; body cream soap; body lotions; body oils; body powder; body scrub; body sprays; cosmetic preparations for body care; cosmetic products for the face and body, namely, creams, lotions, gels, mists, scrubs and oils; deodorants for body care; body spray used as a personal deodorant and as fragrance; deodorant for personal use; face and body beauty creams; face and body creams; liquid soaps for hands, face and body; hair lotions; lotions for face and body care; non-medicated body soaps; soaps for body care; toning lotion for the face, body and hands; cologne water; toilet water; bath beads; bath crystals; shower and bath foams; shower and bath gels; bath lotion; bath oils; bath powder; bath salts; bath soaps in liquid, solid or gel form; mineral salt in the nature of bath salts not for medical purposes; hair tonics; hair cleansers; hair waving lotion; scented oils used to produce aromas when heated; aromatherapy creams; aromatherapy lotions; aromatherapy oils; essential oils for personal use; cosmetic cleansing creams; cosmetic creams; cosmetic oils; cosmetic preparations for skin renewal; cosmetic preparations and products for skin and body care, namely, creams, lotions, gels, mists, scrubs and oils; cosmetic soaps; face creams for cosmetic use; shaving preparations; shaving balms; make-up removers; perfumes; beauty masks; skin masks; beauty serums; skin care products, namely, non-medicated skin serum; lip balm; non-medicated balms for skin; bath milks; beauty milks; face and body milks; cleansing milks; cosmetic milks; moisturizing milks; make-up removing milk, gel, lotions and creams; eye compresses for cosmetic purposes; after sun creams; after sun lotions; non-medicated sun care preparations; sun care lotions; sun creams; after-shave balms; after-shave creams; after-shave emulsions; after-shave gel; after-shave lotions, in Class 3.

 

Facial wipes, namely, medicated pre-moistened wipes; medicated balms for skin, in Class 5.

 

Tweezers; manicure and pedicure nail implements, namely, __________ {list specific items, such as nail files, nail clippers, cuticle pushers, and nail and cuticle scissors}, in Class 8.

 

Jewelry, in Class 14.

 

Facial wipes, namely, disposable wipes not impregnated with chemicals or compounds, in Class 16.

 

Cosmetic bags sold empty, in Class 18.

 

Mirrors, in Class 20.

 

Cosmetic brushes; cosmetic implements, namely, ___________ {list the goods by common commercial name, such as “cosmetic spatulas for use with depilatory preparations” and “foam applicator sticks for applying cosmetics”}; cosmetic applicators, namely, ___________ {list the goods by common commercial name, such as “cosmetic spatulas for use with depilatory preparations” and “foam applicator sticks for applying cosmetics”}; make-up applicators, namely, ___________ {list the goods by common commercial name, such as “cosmetic spatulas for use with depilatory preparations” and “foam applicator sticks for applying cosmetics”}; make-up implements, namely, ___________ {list the goods by common commercial name, such as “cosmetic spatulas for use with depilatory preparations” and “foam applicator sticks for applying cosmetics”}; bath and shower accessories, namely, loofah sponges and bath brushes; cosmetic applicators, namely, wedge-shaped facial sponges for applying make-up; hairbrushes; cotton balls; facial wipes, namely, non-woven fabric cosmetic wipes, in Class 21.

 

Bath and shower accessories, namely, bath gloves, in Class 24.

 

Hair accessories, namely, ____________ {specify goods by common commercial name, such as “twisters” and “claw clips”}, in Class 26.

 

See 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.  See TMEP §1402.04.

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods 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 that are not within the scope of the goods set forth in the present identification.

 

Descriptions of goods and services should use the common, ordinary name for the goods and/or services.  TMEP §1402.01.  If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); TMEP §1402.01. 

 

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem., 102 USPQ at 322. 

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).

 

Multiple-Class Application 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; 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

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.  Applicant’s current filing fee is sufficient for one class.

 

Response Guidelines

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

 

 

/Kim Teresa Moninghoff/

Trademark Examining Attorney

Law Office 113

Phone:  571-272-4738

Fax: 571-273-9113

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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 REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77792459) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 10/1/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77792459&doc_type=OOA&mail_date=20091001 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

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

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 10/1/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

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

 

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.