Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  July 07, 2021

 

International Registration No. 1579816

 

INTRODUCTION

 

The following requirement(s) is/are now made FINAL:  The identification of goods and/or services requirement.  See 37 C.F.R. §2.63(b).

 

On 06/02/2021, the trademark examining attorney issued an Office action with the following issues:

• Identification of goods and/or services requirement
• Mark description requirement
• Email requirement
• Attorney requirement  

 

On 6/08/2021, the applicant filed a timely response:

• Providing an amended identification of goods and/or services
• Providing a mark description statement
• Providing an email address
• Providing attorney information

 

Having considered the applicant’s response, the examining attorney:

• Maintains and now makes final the requirement for an acceptable identification of goods and/or services
• Finds the mark description, email, and attorney requirements have been satisfied

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

PROCEDURAL ISSUE(S)

 

Identification of Goods and/or Services Requirement

 

First, the wording “soaps, namely, face, hand and body soaps” in the identification of goods for International Class 003 must be clarified because it is too broad and could include goods in other international classes depending on whether the soaps are medicated (Class 005) or non-medicated (Class 003).  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Second, the wording “treatment preparations for cosmetic purposes” is indefinite and must be clarified because the type must be specified by common commercial name.  See TMEP §§1402.01.

 

Applicant may amend the identification to list only those items that are within the scope of the goods and/or services set forth in the application or within the scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

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 assigned to the goods and/or services in the corresponding international registration.  TMEP §§1401.03(d), 1904.02(b).

 

Therefore, any modification to this wording must identify goods and/or services that are within the scope of the goods and/or services set forth in the present identification.

 

The following substitute wording is suggested, if appropriate:

 

·       Class 003:  Perfumery; beauty products, namely, beauty masks, beauty lotions; soaps, namely, non-medicated face, hand and body soaps; cosmetics; skin care preparations, namely non-medicated skin care preparations, body polish, cleaners, moisturizers, sunblock and sunscreens; beauty and treatment products, namely beauty soap, beauty creams, non-medicated hair shampoos, conditioners and treatment preparations, namely, {specify type by common commercial name, e.g., non-medicated skin care lotion, etc.}  for cosmetic purposes; creams and lotions for sensitive skin cleansing

 

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.  See TMEP §1402.04.

 

RESPONSE TO OFFICE ACTION 

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following goods and services to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment: 

 

·       Class 003:  Soaps, namely, face, hand and body soaps; treatment preparations for cosmetic purposes

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following goods and/or services only: 

 

·       Class 003:  Perfumery; beauty products, namely, beauty masks, beauty lotions; cosmetics; skin care preparations, namely non-medicated skin care preparations, body polish, cleaners, moisturizers, sunblock and sunscreens; beauty and treatment products, namely beauty soap, beauty creams, non-medicated hair shampoos and conditioners; creams and lotions for sensitive skin cleansing

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)       A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)       An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/mvaghani/

Mayur Vaghani

Trademark Examining Attorney

Law Office 124

Phone: (571) 272-1615

mayur.vaghani@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 07, 2021 for

U.S. Trademark Application Serial No. 79306143

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/mvaghani/

Mayur Vaghani

Trademark Examining Attorney

Law Office 124

Phone: (571) 272-1615

mayur.vaghani@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 07, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”