United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79309081
Mark: FRANK BODY
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Correspondence Address: |
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Applicant: SNDR Pty Ltd
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1254226
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
SEARCH OF USPTO DATABASE OF MARKS
Applicant must disclaim the wording “BODY” because it is 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).
This wording appears in applicant’s identification of goods. Thus, the wording merely describes that a feature of applicant’s cosmetic goods are for use on the body.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BODY” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
The wording used to describe portions of the applicant’s goods needs clarification because it is indefinite. See TMEP §§1402.01, 1402.03
The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). These requirements for specification of the particular goods and/or services apply to applications filed under all statutory bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).
The applicant insufficiently describes the following goods:
Class 03:
· “Non-medicated skin care preparations; non-medicated skin care preparations, namely, cleansing masks, soaps, and skin cleansers; cosmetic preparations for skin care; cleaning preparations for use on the skin; make-up; skin cleansing preparations; skin abrasive preparations; body scrubs; cosmetic scrubs for the lips and face; exfoliants for skin and lip care; cosmetic masks; moisturizing preparations for the skin; skin moisturizers; body moisturizers; non-medicated face care preparations; facial moisturizers; non-medicated balms for use on skin; essential oils; cosmetic oils; cosmetics; soaps for body and face; cosmetic soaps; facial soaps; cosmetic tanning preparations; hair care preparations; hair shampoos and conditioners; hair styling preparations; sun screen; cosmetic sun-protecting preparations; non-medicated lip care preparations” – As indicated in the example below, several of these goods must clarify that they are “non-medicated.”
Applicant may adopt the following identification and classification, with the trademark examining attorney’s suggested additions in bold face type formatting, if accurate:
Class 03: Non-medicated skin care preparations; non-medicated skin care preparations, namely, cleansing masks, soaps, and skin cleansers; cosmetic preparations for skin care; cleaning preparations for use on the skin; make-up; non-medicated skin cleansing preparations; skin abrasive preparations; body scrubs; cosmetic scrubs for the lips and face; non-medicated exfoliants for skin and lip care; cosmetic masks; moisturizing preparations for the skin; skin moisturizers; body moisturizers; non-medicated face care preparations; facial moisturizers; non-medicated balms for use on skin; essential oils; cosmetic oils; cosmetics; non-medicated soaps for body and face; cosmetic soaps; non-medicated facial soaps; cosmetic tanning preparations; hair care preparations; hair shampoos and conditioners; hair styling preparations; sun screen; cosmetic sun-protecting preparations; non-medicated lip care preparations
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.
U.S. ATTORNEY REQUIRED
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).
Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories must be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §2.11(a); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as Australia. For more information, see the U.S. Counsel webpage at http://www.gov.uspto.report/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney.
To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii); TMEP §604.01.
How to respond. Click to file a response to this nonfinal Office action.
/Ryan Lavoie/
Ryan Lavoie
Examining Attorney
Law Office 108
571-272-6774
Ryan.Lavoie@uspto.gov
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