UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/032409
APPLICANT: Rohto Pharmaceutical Co., Ltd.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ROHTO
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 79/032409
INTERNATIONAL REGISTRATION NO. 0907217 .
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, and
(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). Canadian attorneys can only represent Canadian applicants.
37 C.F.R. §10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. TMEP §§602, 602.03, 603.05.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Search Results
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.
Prior Registration
If applicant is the owner of U.S. Registration Nos. 2633109, 2782477, 2670039, 2938487, and 3024000, then applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812. The following standard format is suggested:
Applicant is the owner of U.S. Registration No. 2633109, 2782477, and others.
Identification of Goods
1. International Class 003
The wording “bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; furbishing preparations; cosmetic preparations for skincare; lotions for cosmetic purposes; make up removing preparations; cosmetic preparations for bath; cosmetics for animal use; preparations for freshening the breath (not medicated); laundry preparations; hair rejuvenating preparations; cosmetic preparations for slimming purposes” in the identification of goods is indefinite and must be clarified. TMEP §§1402.01 and 1402.03. Applicant must specifically identify the goods by their common commercial and/or generic names.
The wording “toiletries; soap for foot perspiration” is indefinite and must be clarified. TMEP §§1402.01 and 1402.03. Applicant must indicate if the goods are for non-medical use.
Applicant may adopt the following identification to replace the unacceptable wording, if accurate:
Class 003: Bleaching preparations, detergent, and soap for laundry use; general purpose cleaning, polishing, scouring, and abrasive liquids and powders; cosmetic preparations for skin renewal; non-medicated toiletries; hand and face lotions for cosmetic purposes; make-up removing lotions and milks; cosmetic preparations for bath, namely, bath foam, gel, and oils; non-medicated soap for foot perspiration; cosmetics for animal use, namely, pet shampoo and deodorants; non-medicated preparations for freshening breath, namely, breath mints and gum; laundry preparations, namely, soap and starch; hair rejuvenating preparations, namely, gel, lotions, and sprays; cosmetic preparations for slimming purposes, namely, creams and lotions for cellulite reduction
Applicant must also remove any parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12. The following wording must be amended to remove the parenthesis “facial washes (cosmetics); bath salts (not for medical purposes); anti-perspirants (toiletries); sun-tanning preparations (cosmetics); sunscreen preparations (cosmetics).” Applicant may adopt the following, if accurate:
Class 003: Facial washes; non-medicated bath salts; anti-perspirants; cosmetic sun-tanning preparations; sun screen preparations
2. International Class 005
The wording “materials for dressings; nutrients, tonics and alternatives for medical purposes; skin protective preparations (pharmaceutical); pharmaceutical preparations for skincare; remedies for foot perspiration; ointments for pharmaceutical purposes; tissues impregnated with pharmaceutical lotions; pomades for medical purposes; sunburn preparations for pharmaceutical purposes; preparations for the treatment of burns; slug exterminating preparations” in the identification of goods is indefinite and must be clarified. TMEP §§1402.01 and 1402.03. Applicant must specifically identify the goods by their common commercial and/or generic names.
The wording “pharmaceutical and veterinary preparations; plasters; disinfectants; agents affecting digestive organs; preparations for remedy and/or relief of hay fever; diagnostic preparations and substances; liquid adhesives; eye patches; remedies for perspiration; compresses; tonics (medicine); medicinal drinks; absorbent cotton; animal washes; capsules for pharmaceutical purposes; nutrional additives for medial purposes” in the identification of goods is indefinite and must be clarified. TMEP §§1402.01 and 1402.03. Applicant must indicate the purpose and/or use of the goods.
The wording “processed foodstuffs containing vitamins (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs containing minerals (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs containing dietary fibers (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs containing amino acids (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs containing polyphenol (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs containing citric acids (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules tablets, blocks, jellies and gummy candies; processed foodstuffs containing linoleic acids (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs containing glycerine fatty acid esters (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs containing glucosamines (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs containing chondroitins (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs containing lactic acid bacteria (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs containing bacillus natto (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs containing oligosaccharide and other saccharide (as the main constituent) in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies” in the identification of goods is indefinite and must be clarified. TMEP §§1402.01 and 1402.03. Applicant must clarify this wording by specifying the type of foodstuffs (e.g. food additives) and indicate the purpose or use (e.g. medical use) of the goods.
Applicant may adopt the following identification to replace the unacceptable wording, if accurate:
Class 005: Pharmaceutical preparations for the treatment of {INDICATE SPECIFIC DISEASE, e.g. diabetes}; veterinary preparations for {INDICATE TYPE OF ANIMAL AND CONDITION BEING TREATED, e.g. cats with cancer}; medical plasters and gauze for dressings; disinfectants for {INDICATE USE, e.g. sanitary purposes}; gastrointestinal cleaning agents affecting digestive organs; nutritional supplements in the form of tonics for medical purposes; pharmaceutical preparations for the treatment of hay fever; pharmaceutical skin lotions and creams; diagnostic preparations and reagents for medical use; liquid adhesives for medical use; eye patches for medical purposes; pharmaceutical preparations for the treatment of excessive perspiration; remedies for foot perspiration, namely, foot lotions and powders; anti-itch ointments; pre-moistened tissues impregnated with pharmaceutical lotions; lip pomades for medical purposes; sunburn lotions and creams for pharmaceutical purposes; medicated compresses; medical tonics for the treatment of {INDICATE CONDITION OR DISEASE, e.g. gastrointestinal illnesses}; burn relief medication; dietary supplemental drinks; slug exterminating preparations, namely, poison; absorbent cotton for medical purposes; medicated shampoos and conditioners for dogs; gelatin capsules sold empty for pharmaceuticals; nutritional additives for use in foods and dietary supplements for human consumption for medical purposes; Food additives for medical use and dietary supplements for medical use containing vitamins, minerals, dietary fibers, amino acids, polyphenol, citric acids, linoleic acids, glycerine fatty acid esters, glucosamines, chondroitins, lactic acid bacteria, bacillus natto, and oligosaccharide all in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, medical jellied confectionary, and medical gummy confectionary
Applicant must also remove any parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12. The following wording must be amended to remove the parenthesis “preparations for sun protection (medicated); astringents (pharmaceutical).” Applicant may adopt the following, if accurate:
Class 005: Medicated sun care preparations; pharmaceutical astringents
3. International Class 010
The wording in International Class 010 is acceptable.
4. International Class 029
The wording in the identification of goods is indefinite and must be clarified. TMEP §§1402.01 and 1402.03. Applicant must specifically identify the type of foodstuffs by their common commercial and/or generic names. Applicant must also remove any parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.
Applicant may adopt the following, if accurate:
Class 029: Processed foodstuffs, namely, lard, containing seaweed extracts, animal extracts, and fungi in the from of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks and jellies
5. International Class 030
The wording in the identification of goods is indefinite and must be clarified. TMEP §§1402.01 and 1402.03. Applicant must specifically identify the type of foodstuffs by their common commercial and/or generic names. Applicant must also remove any parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.
Applicant may adopt the following, if accurate:
Class 030: Processed foodstuffs, namely, non-nutritional flavoring additives containing plant extracts and tea extracts in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; processed foodstuffs, namely, non-nutritional flavoring additives containing propolis, royal jellies, and honeys in the form of pills, liquids, pastes, powders, granules, grains, soft capsules, capsules, tablets, blocks, jellies and gummy candies; gummy candies containing seaweed, animal, and fungi extracts
6. Response Guidelines
The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods and/or services in the corresponding international registration. TMEP §§1401.03(d) and 1904.02(b).
Therefore, any modification to the unacceptable wording must identify goods that are in the classifications that were specified in the application for these goods and/or services.
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.
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
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.
/Dannean J Hetzel/
Trademark Examining Attorney
Law Office 106
Phone - 571-272-8858
Fax - 571-273-9106
HOW TO RESPOND TO THIS OFFICE ACTION:
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.