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: 2/12/2010

 

 

The assigned examining attorney has reviewed the referenced application and determines as follows:

 

No Conflicting Marks

 

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.

 

Applicant Has Applied With A 1(b) and 44(d) Filing Basis

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant must request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.

 

Unless applicant indicates otherwise, this Office will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).

 

Identification of Goods

 

Applicant’s description of goods is unacceptable because it is indefinite.  §1402.1. 

 

Applicant’s Current Identification Of Goods

 

Beauty care preparations and products; hair care products and preparations; hair care products in the form of hair sprays; non-medicated toilet preparations for the care of the hair; hair care agents; shampoos; hair cleaning products and preparations; gels, mousses, and balms for hairdressing and hair care; hair lacquers; preparations in aerosol form for hairdressing and hair care; hair-coloring and hair-decolorising preparations; preparations for waving and setting hair; natural body care products for the hair; oils for use in hair care; perfumes, eaux de toilette; toiletries; bath and shower gels; toilet soaps; deodorants for personal use; cosmetics; cosmetic products and preparations; beauty creams; creams, milks, lotions, balms, gels and powders for the face, body and hands; skin cleansing preparations and products; skin care preparations and products; sun-tanning milks, gels and oils and after-sun preparations (cosmetics); make-up preparations and products; beauty face packs; beauty tonics for application to the face and body; essential oils

 

Applicant must clarify the identification of goods as follows.  See TMEP §1402.01.

 

(1)   Must provide the common commercial names for the products as indicated below.

(2)   Please note that “beauty care products” could include goods outside of class 003, such as cosmetic brushes in 021 and nail brushes in class 008.  [the same notation is relevant for cosmetic products]

(3)   Balms may be medicated or non-medicated and in separate classes, e.g. 005 and 003, respectively.

 

 

Suggested Acceptable Identification Of Goods

 

Applicant may adopt the following identification of goods, if accurate:    See TMEP §1402.01.

 

 

Class 003:  Beauty care preparations and products cosmetics; hair care products and preparations, namely {specify the common commercial names, e.g. shampoo}; hair care products in the form of hair sprays; non-medicated toilet preparations for the care of the hair, namely {specify the common commercial name, e.g. impregnated cleaning pads for the care of the hair impregnated with toilet preparations}; hair care agents, namely {specify the common commercial name, e.g. agents for coloring hair}; shampoos; hair cleaning products and preparations; gels, mousses, and non-medicated balms for hairdressing and hair care; hair lacquers; preparations in aerosol form for hairdressing and hair care, namely {specify the common commercial name, e.g. hair spray}; hair-coloring and hair-decolorising preparations; preparations for waving and setting hair; natural body care products for the hair, namely {specify the common commercial names, e.g. hair lotion, conditioner, shampoo}; oils for use in hair care, namely {hair oils}; perfumes, eaux de toilette; non-medicated toiletries; bath and shower gels; toilet soaps; deodorants for personal use; cosmetics; cosmetic products and preparations; beauty creams; creams, milks, lotions, non-medicated balms, gels and powders, namely {specify the type of powder, e.g. talcum powder, non-medicated hand powder} for the face, body and hands; skin cleansing preparations and products for non-medical use; non-medicated skin care preparations and products; sun-tanning preparations, namely milks, gels and oils and after-sun preparations, namely {specify the common commercial name, e.g. milks} (cosmetics); make-up preparations and products; beauty face packs comprising cosmetics; beauty tonics for application to the face and body; essential oils

 

Class 008:  beauty care products, namely nail files

 

Class 021:  cosmetic products, namely cosmetic brushes

 

Class 044:  Hair care services, namely hair salon services; beauty salon services; advisory services relating to beauty treatment of {specify what will be treated, e.g. facial treatments to protect face in the form of cosmetic peels }and hair care of {specify what will be treated, e.g. treatments to protect hair from exposure to sunlight}; beauty salon services; beauty therapy services, namely medical spa services in particular minimally and non-invasisve cosmetic and body fitness therapies; facial beauty treatment services, namely providing facial treatment services; consultancy services relating to beauty and hair care, namely specify the specific nature of the consultation; please note that this could include multiple classes, for instance cosmetic research consultation is class 042}; information and advisory services relating to beauty and hair care products and their use namely specify the specific nature of the consultation; please note that this could include multiple classes, for instance cosmetic research consultation is class 042.  Currently, this recitation of services is unclear, are you referring to use of a hair brush, for example?}; technical, management, consultancy, advisory and information services relating to all the aforesaid services

 

Please Review The ID Manual For Guidance

 

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.

 

Scope Advisory

 

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.

Classification of Goods

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 3,8,21,44.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

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) and 44(e):

 

(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.

 

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.

 

 

/Nakia D. Henry/

Trademark Attorney (Law Office 111)

United States Patent and Trademark Office

Phone:  (571) 272-7208

Fax:    (571) 273-7208

 

 

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.