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  78/415,988

 

The assigned Examining Attorney has reviewed the referenced application filed on May 10, 2004, and has determined the following.

 

 

Search Results:  Prior-Pending Application

Information is enclosed concerning pending Application Serial No. 78/225,023.  Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between Applicant’s mark and the mark in the above-noted application.  The filing date of the referenced application precedes Applicant’s filing date.  If the earlier‑filed application registers, registration may be refused under Section 2(d).  37 C.F.R. §2.83.  Therefore, upon entry of a response to the Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If Applicant believes that there is no potential conflict between this application and the earlier-filed application, Applicant may present arguments relevant to the issue.  The election to present or not to present such arguments at this time in no way limits Applicant’s right to address this issue at a later date.  Nonetheless, Applicant must respond at this time to the following requirements in order to avoid abandonment of the application.

 

 

Requirement for Acceptable Identification of Goods

The identification of goods needs clarification because it is too broad in that it includes goods classified in more than one international class.  TMEP §§ 1402.01 and 1402.03.  Applicant may adopt the following suggested identification of goods, in whole or in part, if it accurately describes Applicant’s goods:

 

Skin moisturizing cream, in International Class 3;

 

Vaginal moisturizing cream, in International Class 5.

 

TMEP §§ 1402.01 and 1402.03.

 

For assistance with identifying its goods in an acceptable manner, Applicant is strongly encouraged to consult the online searchable Trademark Acceptable Identification of Goods & Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

In the identification of goods, Applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If Applicant chooses to use indefinite terms such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then such terms must be followed by the word “namely” and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

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

 

Addition of International Class(es)

If Applicant elects to add one or more international classes to this application, Applicant must comply with each of the following for those goods based upon an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1) Applicant must list the goods 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 not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

 

Requirement for Information

The Examining Attorney requires information about the goods to aid in determining whether all or part of Applicant’s mark is merely descriptive as applied to the goods specified in the application.  TMEP § 814.  To comply with this requirement, Applicant may submit a fact sheet, instruction manual, and/or advertisement.  If unavailable, Applicant must submit information for goods of the same type, explaining how its own goods will differ.  If Applicant’s goods feature new technology and no competing goods are available, Applicant must provide a detailed factual description of its goods.

 

In all cases, the submitted factual information must make clear how the goods operate, its salient features, and what its prospective customers and channel(s) of trade are.  Conclusory statements from Applicant regarding the merely-descriptiveness standard – e.g., “the mark is not merely descriptive of the goods” – will not be sufficient to meet this requirement for information.

 

Trademark Rule 2.61(b) states that “[t]he examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”  The Trademark Trial and Appeal Board has upheld a refusal of registration based upon an applicant’s failure to provide information requested under this rule.  In re Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990) (failure to submit patent information regarding configuration).  Please also note that referral to a website where information concerning Applicant’s goods can be found, in lieu of a tangible submission, is an inappropriate response to this requirement.  In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004).

 

In addition to the above, Applicant must state for the record whether “OZONE” has any significance in the relevant field or as applied to Applicant’s moisturizing cream.  37 C.F.R. §2.61(b).

 

 

The Trademark Manual of Examining Procedure (“TMEP”)

“TMEP” refers to the Trademark Manual of Examining Procedure (3rd ed., Rev. 2, May 2003), available on the United States Patent and Trademark Office website at http://www.gov.uspto.report/web/offices/tac/tmep/.  This is a detailed guidebook written by the Office to explain the laws and procedures that govern the trademark application, registration and post-registration processes.

 

 

Notice:  Trademark Operation Relocation

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

Conclusion

Please note that there is no required format or form for responding to this Office action.  However, Applicant should include the following information on all correspondence with the Office:  (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 in writing 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., explain why it 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.

 

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 Applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned Examining Attorney.

 

/Michael E. Hall/

Michael E. Hall

Examining Attorney

Law Office 105

571-272-9299

571-273-9105 (for formal fax responses to Office action)

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.