Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 7/1/2013

INTERNATIONAL REGISTRATION NO. 1133112

 

The trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

 

SUSPENSION PENDING PRIOR APPLICATION – CLASS 3 GOODS ONLY:  The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application.  If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned.  37 C.F.R. §2.83(c).  A copy of information relevant to this referenced application(s) was sent previously.

 

            - Application Serial No(s). 85367088

 

Advisory:  As indicated below, the amended identification of goods is unacceptable as beyond the scope of the original identification of goods; therefore, the above-referenced application continues to pose as a bar to the registration of applicant’s class 3 goods as identified in the original application.  Such goods are highly related to the goods of the prior applicant so that confusion is likely.

 

WITHDRAWAL OF SECTION 2(d) REFUSAL:  Per applicant’s deletion of the class 14 goods from the application, the refusal under Section 2(d) with regard to Reg. No. 3354143 is withdrawn.

 

CONTINUED REQUIREMENT – IDENTIFICATION OF GOODS – CLASS 3:  The requirement for an acceptably amended identification of goods is continued with regard to class 3 only. 

 

Specifically, applicant was required to amend portions of the class 3 identification of goods.  In response, applicant deleted the original wording and amended it to “Adult sexual aids in the nature of Aphrodisiac massage oil and Aphrodisiac incense.”  This wording is not acceptable because it is beyond the scope of the goods in the application as filed.  See 37 C.F.R. §2.71(a); TMEP §§1402.01(c), 1904.02(c)(iv).  Specifically, this wording is beyond the scope of the identification because there is nothing in the original identification that indicates that the goods include either massage oil or incense.  The goods included “Deodorants, soap, perfumes, essential oils, cosmetics, hair lotions, dentifrices, depilatory preparations, make-up removing preparations, lipsticks, beauty masks, shaving preparations, leather preservatives (polishes), creams for leather, hygiene preparations.”  The amended wording simply is not within the scope of the original wording. 

 

The scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau).  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).  If an applicant amends the identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law.  TMEP §§1402.01(c), 1904.02(c).   

 

In addition, in an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1402.01(c), 1904.02(b).  Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). 

 

Applicant must amend this wording to substitute goods in International Class 3 that are within the scope of the goods in the application as filed.  See TMEP §§1402.07(a), 1904.02(c)(iv).  In the alternative, applicant may delete the unacceptable wording from the identification.  See TMEP §1904.02(c)(iv).  However, once an application has been expressly amended to delete goods and/or services, those items generally may not be later re-inserted.  TMEP §1402.07(e).

 

If applicant chooses to amend the class 3 identification (rather than deleting it), applicant must amend the wording “deodorants, “leather preservatives (polishers),” and “hygiene preparations.”  In each case, the nature of the goods must be clarified.  The wording may be amended to the following:

 

Class 3:

Deodorants for personal use, soap, perfumes, essential oils, cosmetics, hair lotions, dentifrices, depilatory preparations, make-up removing preparations, lipsticks, beauty masks, shaving preparations, leather preserving polishes preservatives (polishes), creams for leather, hygiene preparations, namely, feminine hygiene cleansing towelettes

 

The amended identification of goods in class 10 is acceptable.

 

REMAINING REQUIREMENT:  Applicant has indicated that it is an individual, citizen of Monaco.  There are no other outstanding requirements.

 

 

/Susan K. Lawrence/

Susan K. Lawrence

Trademark Examining Attorney

Law Office 116

571-272-9186

sue.lawrence@uspto.gov (informal communication)

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/1/2013 FOR U.S. APPLICATION SERIAL NO.79119469

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.