Offc Action Outgoing

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SEARCH OF OFFICE’S DATABASE OF MARKS

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

IDENTIFICATION OF GOODS

The identification of goods is indefinite and must be clarified because as indicated below, some of the wording in the identification require more specification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.

Applicant may adopt the following wording, if accurate:

“Mascara; false eyelashes; eyebrow cosmetics; eyebrow pencils; make-up removing preparations; mascara removing preparations, preparations for removing eye make-up; make-up removing milks; eyelash and eyebrow dyes; hair dyes; oxidation preparations for use in dyeing hair, eyelashes and eyebrows; beard dyes; bleaching preparations for cosmetic purposes; depilatory preparations; depilatory wax; adhesives for cosmetic purposes; adhesives for affixing false eyelashes; skin cream; non-medicated skin care preparations; cotton wool and cotton sticks for cosmetic purposes; cosmetics; cosmetic pencils; eyelid shadow; concealers; eyeliners for the eyes; lip stains for cosmetics; cosmetic kits comprised of {indicate non-medicated cosmetics, e.g., lipstick, lip gloss, etc.}; cosmetic powder compact refills; make-up preparations; make-up foundations; powder for make-up; make-up pencils; make-up for the face; make-up kits comprised of {indicate non-medicated cosmetics, e.g., lipstick, lip gloss, etc.}; compacts containing make-up; make-up for compacts; skin make-up; eyelid doubling makeup; eye make-up; cosmetics in the form of eye shadow; eyebrow powder; eyebrow mascara; eyebrow colors in the form of pencils and powders; cosmetics for eyelashes; rouges; blush pencils; cosmetic rouges; liquid rouge; cosmetics in the form of rouge; lipstick; dusting powder; solid powder for compacts cosmetics; perfumed powder for cosmetic use; cosmetics in the form of powders; cosmetic face powders; make-up for the face and body; cosmetic eye pencils; make-up preparations for the face and body,” in International Class 3.

“Downloadable electronic publications, namely, training guides in electronic format in the field of {indicate subject matter or field of training}; downloadable educational course materials in the field of {indicate subject matter or field of study}; training software featuring instructions in the fields of indicate subject matter or field of training}; instruction manuals in electronic format in the field of {indicate subject matter or field e.g., computer software}; downloadable electronic publications, namely, training manuals in the form of a computer program in the field of {indicate subject matter}; e-books featuring {indicate subject matter} recorded on computer media; books recorded on tape, namely, audio books in the field of {indicate subject matter or field; electronic books recorded on disc featuring {indicate subject matter}; digital books downloadable from the internet featuring {indicate subject matter}; dvds featuring {indicate subject matter}; blank dvds; interactive dvds featuring {indicate subject matter}; prerecorded exercise dvds; compact discs read-only memory featuring {indicate subject matter}; prerecorded video compact discs featuring {indicate subject matter}; blank video compact discs; compact discs featuring {indicate subject matter}; audio compact discs,” in International Class 9.

“Paper tissues for cosmetic use; tissues of paper for removing make-up; printed instructional manuals for teaching purposes; books in the field of {indicate subject matter},” in International Class 16.

“Cosmetic trays of plastic or glass, applicators of plastic for cosmetic purposes, namely make up mixing palettes and bowls sold empty; cosmetic brushes; cosmetic sponges used for applying make-up; cosmetic powder compacts sold empty; applicators for cosmetics, namely, applicator wands for applying eye make-up; dispensers for cosmetics namely, droppers sold empty for cosmetics purposes; plastic household storage containers for cosmetics; applicator sticks and wands for applying eye make-up; facial sponges for applying make-up; applicator sticks for applying make-up; dusting brushes,” in International Class 21.

IDENTIFICATION OF SERVICES

The identification of services is indefinite and must be clarified because the nature of the services is unclear from the present record as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.

Additionally, the wording “definition of training standards for a training institute; provision of facilities for tuition” is vague and must clarified or deleted.

Applicant may adopt the following wording, if accurate:

“Mail order services featuring cosmetics; retail store services featuring cosmetics; advertising services in the field of cosmetics; providing consumer product advice relating to cosmetics; online retail store services relating to cosmetic and beauty products; providing consumer product information relating to cosmetics; commercial information and advice services for consumers in the choice of make-up products,” in International Class 35.

“Providing training {indicate form of training, e.g., courses, seminars, workshops, etc.} in the field of {indicate subject matter of courses}; training in the use of {indicate specific type of equipment, e.g. computers, construction machinery}; providing vocational training services in the fields of {indicate field}; providing training programs in the fields of how to become a coach; educational services, namely, providing vocational training services; providing educational instruction in the field of {indicate field}; staff training services in the field of {indicate field}; educational services in the nature of beauty schools; providing training and instruction in the field of {indicate field}; provision of training courses in the field of {indicate field}; conducting of educational exhibitions for training purposes in the nature of {indicate specific event and subject matter of event}; organization of training courses in the field of {indicate field}; provision of training facilities; rental of teaching materials in the nature of books, texts, workbooks, worksheets, flash cards, CDs, and DVDs; setting of training standards namely, providing training in the field of business management, human resources management, business administration and occupational health and safety; educational services, namely, providing seminars in the fields of {indicate subject matter or fields of educational activity}; conducting of instructional seminars in the fields of {indicate subject matter or fields of educational activity}; organization of seminars relating to training in the field of {indicate field}; arrangement of conferences for educational purposes; providing of education in the field of {indicate specific field, e.g., computers, music, art} rendered through correspondence courses; dissemination of printed educational materials of others in the field of {indicate subject matter}; recreation and training services, namely, athletic training services, personal training services, strength and conditioning training and resistance training; educational services in the nature of {indicate specific area of specialty, e.g. fine arts, business correspondence course} schools provided by institutes of further education; instructional and training services, namely, providing courses, workshops, seminars, lectures, conferences and panel discussions in the fields; education services provided by television; provision of training facilities for young people; organizing of competitions for education in the field of {indicate field}; organization of educational seminars in the field of {indicate field}; organization of educational exhibitions in the nature of seminars in the field of {indicate field}; arranging of exhibitions for educational purposes; provision of online training in the fields of {indicate field}; computer education training services; entertainment, education and instruction services in the field of {indicate field}; conducting instructional courses in the fields of {indicate field}; education services, namely, providing motivational speaking services in the field of {indicate subject matter or field} provided by television programs; instruction in the field of training and education; management of education services, namely, provision of education courses in the field of {indicate field}; provision of education courses in the field of {indicate field}; arranging of competitions for education or entertainment; conducting workshops for educational purposes in the field of {indicate specific field}; arrangement of seminars for educational purposes; arranging of presentations for educational purposes by authors and illustrators to children; planning of seminars for educational purposes in the fields of {indicate field}; arranging of exhibitions for training purposes; conducting exhibitions for educational purposes in the field of {indicate field}; arranging educational demonstrations for training purposes; arranging and conducting of educational courses in the fields of {indicate field}; preparation of educational courses and examinations, namely, developing curriculum for others in the field of {indicate field}; planning of lectures for educational purposes in the fields of {indicate field}; arranging of festivals for educational training purposes; arranging of educational displays for training purposes in the field of {indicate field}; arranging of displays for educational purposes in the field of {indicate field}; arranging for students to participate in educational activities in the nature of conducting classes, seminars, workshops in the field of {indicate field}; organization of youth training schemes, namely, mentoring and training of young people in the fields {indicate field}; educational services in the field of {indicate specific field, e.g., computers, music, art} rendered through correspondence courses; educational services, namely, conducting classes, workshops in the field of beauty therapy; vocational skills training in the field of {indicate field}; arranging professional workshop and training courses; arranging and conducting of seminars and workshops in the field of {indicate field}; educational and training services, namely, arranging and conducting educational and training seminars, conferences, courses, tutorials, and workshops in the field of healthcare; educational services, namely, providing courses of instruction in the field of {indicate field}; educational services, namely, providing courses of education at the primary, secondary, undergraduate, graduate level; provision of education on-line from a computer database or via the internet or extranets in the fields of {indicate field}; conducting of instructional, educational and training courses for young people and adults in the field of {indicate field}; providing on-line information and news in the field of employment training; consultancy and information services relating to arranging, conducting and organization of educational workshops in the field of {indicate field}; conducting of classes in the field of {indicate field}; organization of courses using distance learning methods of instruction in the field of {indicate field}; arranging of workshops and seminars in the field of {indicate field}; production of course material distributed at professional seminars in the field of {indicate field}; production of course material distributed at professional lectures in the field of {indicate field}; production of course material distributed at professional courses in the field of {indicate field}; providing computer assisted courses of instruction in the field of {indicate field}; computer training, namely, training in the use and operation of computers and software usage; beauty arts instruction; vocational training services and vocational training in the field of {indicate field}; arranging of courses of instruction in the field of {indicate field}; arranging of training courses, namely, conducting classes in the fields of {indicate field}; providing educational practical training demonstration; conducting of courses in the field of {indicate field}; publication of instructional literature; publication of training manuals; conducting training workshops in the field of {indicate field}; providing training in the field of employment skills; providing vocational training courses in the field of {indicate field}; teaching of cosmetic skills and teaching of beauty skills; providing educational workshops for training purposes in the fields of {indicate field}; providing courses of instruction for young people in the fields of {indicate field}; arranging and conducting of training courses in the fields of {indicate field}; coaching in the field of {indicate field or subject matter}; educational services in the nature of beauty schools; hairdressing instruction; publication of books; publishing services, namely, publishing of books and magazines; electronic online publication of periodicals and books; publication of electronic books and journals on-line; publication of electronic books and periodicals on the internet; publication of periodicals and books in electronic form; non-downloadable on-line electronic publication in the nature of electronic books and journals in the field of {indicate field},” in International Class 41.

Note that the identification of goods and/or services contains parentheses and brackets. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application 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 or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id.

Therefore, the parentheses and brackets have been removed from the identification and any parenthetical or bracketed information has been incorporated into the description of the goods and/or services.

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), 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); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

To permit proper examination of the application, applicant must explain whether the wording in the mark “REFECTOCIL” has any significance in the specific field or trade or industry or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.

DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

/Naakwama Ankrah/

Trademark Attorney Advisor

Law Office 109

571-272-9315

naakwama.ankrah@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

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 TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.