UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/250383 PALMOLIVE AROMA THERAPY SENSUAL

 

The assigned examining attorney has reviewed the statement of use filed on May 15, 2003 and has determined the following.

 

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.

 

Identification of Goods is Indefinite

 

The wording “essential oils,” “bleaching and washing preparations,” and “cleaning, polishing, degreasing and abrading preparations” in the identification of goods is unacceptable as indefinite because it identifies a wide variety of goods.  The applicant must specify the nature of these goods and/or the field of use of these goods.  See recommendation below for further clarification.  Thus, the applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses.  TMEP §1402.01.

 

The applicant may adopt the following identification, in whole or in part, if accurate [changes are highlighted in bold-faced type]:   

 

Personal care products, namely, soap, body wash, bath and shower gels, bath foams; liquid hand soap; body and skin oils, lotions and creams; shampoos, conditioners, hair lotions; cosmetics, essential oils for [applicant must specify for personal use or for use in the manufacture of scented products], perfumery; bleaching and washing preparations, namely, [applicant must list specific products, i.e. laundry bleach and household cleaning preparations]; general purpose cleaning, http://atlas/netacgi/ - h6http://atlas/netacgi/ - h8polishing, and abrasive liquids and powders; degreasing preparations not used in manufacturing processes for use on [applicant must indicate specific type of surface or field of use], in International Class 3.[1] 

 

TMEP sections 1402.01 and 1402.03. 

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

Foreign Registration NOT From Country of Origin

 

If applicant intends to rely on the registration issuing from the identified foreign application as its basis for registration, then applicant must provide evidence that France is a “country of origin,” i.e., that applicant has a bona fide and effective industrial or commercial establishment in France.  Trademark Act Section 44(c), 15 U.S.C. §1126(c); TMEP §§1002.01, 1002.02 and 1002.04.

 

The application record shows that applicant is domiciled in New York, USA, but the foreign application on which applicant relies for priority was filed in France.  To obtain a priority filing date under §44(d), the foreign application does not have to be filed in applicant’s country of origin.  However, to obtain registration under §44(e) based on the foreign registration that will issue from the application on which applicant relies for priority, applicant must establish that the country in which the application was filed is its country of origin, i.e., that applicant has a bona fide and effective industrial or commercial establishment in that country.

 

If applicant cannot establish that the country in which the foreign application was filed is the applicant’s country of origin, registration under §44(e) will be refused.  In such case, applicant may amend the application to rely on §1(a) or §1(b) as a basis.  See 37 C.F.R. §2.35 and TMEP §§806.03 et seq. regarding amendment of the basis.  Where an applicant meets the requirements of §44(d) as of the filing date of the United States application, the applicant may retain the priority filing date without perfecting the §44(e) basis.  37 C.F.R. §§2.35(b)(4); TMEP §806.04(b).

 

Please note that while §44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  A party who files under §44(d) must establish a basis for registration.  37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02 and 1003.03.

 

Dual Filing Basis:  Applicant May Proceed Solely on Intent-to-Use Basis

 

The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and claiming priority under Section 44(d), 15 U.S.C. §1126(d), based on a foreign application.  Under these circumstances, the applicant may rely solely on its intent to use the mark in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date.  If the applicant chooses to do so, this Office will approve the case for publication without waiting for the applicant to submit a certified copy of the foreign registration.  Of course, the application must be in condition for publication in all other respects.  Moreover, while the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

If the applicant wishes to proceed relying on the applicant’s intent to use the mark in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney.  TMEP §§806.02(f) and 806.04(b).

 

If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit the certification or certified copy of the foreign registration and, if appropriate, an English translation.  It is customary for the translator to sign the translation.  TMEP §§1004.01 and 1004.01(b).

 

Disclaimer Required

 

Trademark Act Section 6(a), 15 U.S.C. Section 1056(a), states that the Commissioner may require the applicant to disclaim an unregistrable component of a mark.  Trademark Act Section 2(e), 15 U.S.C. Section 1052(e), bars the registration of a mark which is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive of the goods. Therefore, the Commissioner may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive or deceptively misdescriptive, or primarily geographically descriptive.  If an applicant does not comply with a disclaimer requirement, the examining attorney may refuse registration of the entire mark.  TMEP section 1213.01(b).

 

The applicant must disclaim the descriptive wording “AROMATHERAPY” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The term AROMATHERAPY” is defined as “the use of selected fragrant substances in lotions and inhalants in an effort to affect mood and promote health.”  See attached document.  The wording is merely descriptive because it describes the purpose of the goods.  In other words, the wording is descriptive because the applicant’s products will be used for purposes of aromatherapy.  An applicant may not claim an exclusive right to use a term that would deprive competitors from an apt description of their goods or services.

 

A properly worded disclaimer should read as follows:

 

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

 

NOTE:  If a mark comprises a word or words which are misspelled but nonetheless must be disclaimed, the disclaimer of the word or words in the mark should be in the correct spelling.  See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Newport Fastener Co. Inc., 5 USPQ2d 1064 (TTAB 1987).  TMEP §1213.08 et seq.  Thus, the applicant must disclaim the term AROMATHERAPY (and not AROMA THERAPY) apart from the mark as shown.

 

Response to Office Action

 

Please note: If the applicant submits a response via email, an electronic signature is required.  An applicant, registrant or attorney may sign an e-mail communication by entering a “symbol” that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an e-mail communication containing the “/s/” (“/(signature)/”) notation in lieu of a signature.  A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .gif format.  TMEP  Section 304.08.           

 

 

 

 

 

 

 

 

/daniellemattessich/

Danielle I. Mattessich

Trademark Attorney, Law Office 105

(703) 308-9105 Ext. 261

Fax:  (703) 746-8105

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.