Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/549784

 

The assigned trademark examining attorney has reviewed the referenced application filed on January 19, 2005, and has determined the following.

 

SEARCH RESULTS

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

IDENTIFICATION OF GOODS

 

The identification of goods is unacceptable as indefinite and overly broad.  The applicant must amend the identification to delete the wording “products” and replace with “preparations.” Additionally, “personal lubricants” is outside the scope of International Class 003, as it belongs in International Class 005.  TMEP §1402.01. Applicant must limit the identification to the one class paid for, or submit additional fees to prosecute this as a combined multiple class application. Applicant may amend to adopt the following if accurate:

 

“Cosmetics, perfume, cologne, eau de toilette, skin cream, body cream, hand cream, skin lotion, body lotions, skin moisturizers, skin emollient, skin clarifiers, skin cleansing creams, skin cleansing lotions, skin toners, soaps, sun tanning preparations, sun tan lotion, personal lubricants, massage and body oils, body deodorants, hair care products preparations, hair control and conditioning cream and hair tonic, hair care products, hair shampoo, hair conditioner, hair styling mousse, hair spray, hair styling gel, leave in hair conditioning mist, eaux de parfum, essential oils for personal use, cosmetic products preparations for the face and body, cosmetic preparations for baths, deodorant soaps for personal use, facial lotions, facial beauty masks, body powder and face powder, skin oils and sunscreen oils, lipsticks, pre-shave and after-shave lotions, eye shadow, eyebrow pencil, mascara, face and body emulsions, vanishing cream, anti-wrinkle cream, face rouge, eye make-up remover, eye liner, nail gloss powder, nail polish, protective base for the nails, nail polish removers, nail dyeing and decorating materials preparations, skin milk, skin freshener, non-medicated lip balm, lip gloss, solid face powder for compact use, body gel for massage use, bath beads, bath lotion, bath foam, bath gel, bath pearls, bath crystals, non-medicated bath salts, bath powder, bath oil, and antiperspirants.” International Class 003

 

“gel for use as person lubricant.” International Class 005

 

“Water-based personal lubricants.” International Class 005

 

Where possible, the examining attorney has provided guidelines to assist the applicant in amending the existing identification of goods and services. The applicant may wish to consult the on-line identification manual on the USPTO homepage for acceptable common names of goods and services; and classification therefor.  http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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.

 

REQUIREMENTS FOR A COMBINED APPLICATION

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on intent to use:

 

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.

 

 

 

PARTIAL ABANDONMENT - ADVISORY

 

If applicant should fail to respond to this Office action within the six month time limit, then the following goods will be deleted from the application: 

 

“Personal lubricants, hair care products, cosmetic products for the face and body, nail dyeing and decorating materials.”

 

The application will then proceed forward for the following goods only:

 

“Cosmetics, perfume, cologne, eau de toilette, skin cream, body cream, hand cream, skin lotion, body lotions, skin moisturizers, skin emollient, skin clarifiers, skin cleansing creams, skin cleansing lotions, skin toners, soaps, sun tanning preparations, sun tan lotion, massage and body oils, body deodorants, hair control and conditioning cream and hair tonic, hair care products, hair shampoo, hair conditioner, hair styling mousse, hair spray, hair styling gel, leave in hair conditioning mist, eaux de parfum, essential oils for personal use, cosmetic preparations for baths, deodorant soaps for personal use, facial lotions, facial beauty masks, body powder and face powder, skin oils and sunscreen oils, lipsticks, pre-shave and after-shave lotions, eye shadow, eyebrow pencil, mascara, face and body emulsions, vanishing cream, anti-wrinkle cream, face rouge, eye make-up remover, eye liner, nail gloss powder, nail polish, protective base for the nails, nail polish removers, skin milk, skin freshener, non-medicated lip balm, lip gloss, solid face powder for compact use, body gel for massage use, bath beads, bath lotion, bath foam, bath gel, bath pearls, bath crystals, non-medicated bath salts, bath powder, bath oil, and antiperspirants.” International Class 003

 

37 C.F.R. §2.65(a).

/gy/

Gretta Yao

Attorney

United States Patent and Trademark Office

Law Office 105

T. 571-272-9313

F. 571-273-9313

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

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

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

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