Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

 

INTERNATIONAL REGISTRATION NO. 1461926

 

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.

 

SUMMARY OF ISSUES:

 

• POTENTIAL SECTION 2(d) REFUSAL – PRIOR PENDING APPLICATION
• TRANSLATION REQUIREMENT
• IDENTIFICATION OF GOODS
• DISCLAIMER REQUIREMENT

 

POTENTIAL SECTION 2(d) REFUSAL – PRIOR PENDING APPLICATION

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 88101158 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

TRANSLATION REQUIRED

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark “PARFUMERIE”.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “PARFUMERIE” in the mark is “perfumery”.  TMEP §809.03.  See attached translation evidence.

 

IDENTIFICATION OF GOODS

 

The identification of goods highlighted below is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the goods and intended consumer as well as its main purpose and intended uses.  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.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as "apparatus," "components," "devices," "materials," or "parts," such wording must be followed by "namely," and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

The identification of “cosmetic kits” in International Class 3 is indefinite and must be clarified to list the components, using the guidelines below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03.  However, the international classification for the kits may not be changed from the classification assigned by the International Bureau of the World Intellectual Property Organization (International Bureau).  37 C.F.R. §2.85(d).  Further, any amendment to the identification must be within the scope of the goods listed in the request for extension of protection to the United States.  See 37 C.F.R. §§2.71(a), 7.25(a); TMEP §§1402.06(b), 1904.02(b). 

 

For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of components that make up the kits, with all of the primary components listed first.  See TMEP §1401.05(a).  These primary components must be classified in International Class 3.

 

The identification of goods contains 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, applicant must remove the brackets from the identification and incorporate any bracketed information into the description of the goods.  Applicant may also delete the bracketed information where indicated below.

 

Applicant may adopt the following amended identification of goods suggested by the trademark examining attorney, if they accurately reflect the nature, function, purpose, and scope of applicant's goods.  The suggested identification also serves as examples of acceptable language and may be used as a guide in drafting amended language.  Please note required changes in bold type, strikethroughs reflecting deletions and applicant should pay particular attention to language removed or inserted by the trademark examining attorney: 

 

International Class 003: Amber being perfume; aromatic essential oils; air fragrancing preparations; cake flavorings being essential oils; flavorings for beverages being essential oils; food flavorings being essential oils; breath freshening sprays; balms, other than for medical purposes, namely, ________ {clarify types, e.g. lip balm, shaving balm}; lip glosses; sachets for perfuming linen; scented linen water; Javelle water being _______ {clarify goods, e.g. bleaching preparations for household use}; lavender water; toilet water; depilatory wax; mustache wax; massage gels, other than for medical purposes; heliotropine being _______ {clarify goods, e.g. essential oils}; make-up; deodorants for pets; deodorants for human beings or for animals; depilatory preparations; air fragrance reed diffusers; scented wood; perfumes; perfumery; decorative transfers for cosmetic purposes; ionone being perfumery; eyebrow pencils; cosmetic pencils; adhesives for affixing false eyelashes; adhesives for affixing false hair; hair conditioners; beard dyes; cosmetic dyes, namely, ________ {clarify types, e.g. hair dyes, beard dyes}; cosmetic creams; skin whitening creams; incense; hair spray; nail polish; hair lotions; lotions for cosmetic purposes; after-shave lotions; beauty masks; oils for perfumes and scents; oils for cosmetic purposes; oils for toiletry purposes; essential oils; essential oils of cedarwood; essential oils of lemon; essential oils of citron; oils for cleaning purposes; bergamot oil; gaultheria oil; jasmine oil for personal use; lavender oil; almond oil for cosmetic purposes; rose oil for cosmetic purposes; almond milk for cosmetic purposes; cleansing milk for toilet purposes; musk being perfumery; deodorant soap; shaving soap; soap for brightening textile; cakes of toilet soap; antiperspirant soap; soap for foot perspiration; soap, namely, ________ {clarify types, e.g. beauty soap, bath soaps}; almond soap; mint for perfumery; cosmetic kits comprised of ______ {indicate non-medicated cosmetics, e.g. lipstick, lip gloss}; eau de Cologne; bases for flower perfumes, namely, ________ {clarify types, e.g. ethereal essences, essential oils}; joss sticks; dentifrices; lipstick cases; breath freshening strips; teeth whitening strips impregnated with teeth whitening preparations; lipsticks; pomades for cosmetic purposes; shaving preparations; cosmetic preparations for baths; bath preparations, not for medical purposes; hair straightening preparations; hair waving preparations; color-removing preparations for hair; leather bleaching preparations for household use; mouthwashes, not for medical purposes; cosmetic preparations for slimming purposes; make-up removing preparations; nail care preparations; collagen preparations for cosmetic purposes; aloe vera preparations for cosmetic purposes; sunscreen preparations; breath freshening preparations for personal hygiene; make-up powder; nail varnish removers; vaginal washes for personal sanitary or deodorant purposes; tissues impregnated with cosmetic lotions; tissues impregnated with make-up removing preparations; massage candles for cosmetic purposes; aromatic potpourris [fragrances]; bath salts, not for medical purposes; fumigation preparations being perfumes; astringents for cosmetic purposes; eyebrow cosmetics; make-up preparations; cosmetic sun-tanning preparations [cosmetics]; hair dyes; hair waving preparations, namely, neutralizers for permanent waving; cosmetic preparations for eyelashes; cosmetic preparations for skin care; cosmetics; cosmetics for children; cosmetics for animals; mascara; cleansers for intimate personal hygiene purposes, non medicated; douching preparations for personal sanitary or deodorant purposes [toiletries]; bleaching preparations [decolorants] for cosmetic purposes; antiperspirants [toiletries]; non-medicated toiletry preparations; phytocosmetic preparations; talcum powder, for toilet use; terpenes being essential oils; henna for cosmetic purposes; non-medicated grooming preparations in the nature of shampoos for animals [non-medicated grooming preparations]; non-medicated grooming preparations in the nature of shampoos for pets [non-medicated grooming preparations]; dry shampoos; shampoos; topical herbal extracts for cosmetic purposes; extracts of flowers being perfumes; ethereal essences; badian essence being essential oils; mint essence being essential oil

 

International Class 004: Candles for nightlights [candles]; perfumed candles; Christmas tree candles; candles

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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).

 

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.

 

DISCLAIMER REQUIRED

 

If the mark is determined to be otherwise registrable, then applicant must still disclaim the following unregistrable matter.

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “PARFUMERIE” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The wording “PARFUMERIE” refers to “the business of making and selling perfumes” or “a store that sells perfumes.”  Please see the attached dictionary definitions.  Here, given the identification of goods, applicant is in the business of making and selling perfumes and the applied-for goods in classes 3 and 4 are sold in a store that sells perfumes.  As such, the wording “PARFUMERIE” merely describes a characteristic or feature of applicant’s goods and must be disclaimed for the record.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “PARFUMERIE” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

TRADEMARK COUNSEL SUGGESTED 

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of an attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys 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/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

U.S. COUNSEL RULES CHANGES ADVISORY: In spring 2019, the USPTO is likely to issue proposed changes to the federal trademark regulations to require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

 

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. 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

/Hai-Ly Lam/

Hai-Ly Lam

Trademark Examining Attorney

Law Office 112

Telephone: (571) 272-3354

Email: hai.lam@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.