UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 12/18/2012

 

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 that Applicant Must Address

 

1)     Amended Identification of Goods and Services is Required

2)     Name of a Living Individual – Consent Required

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES IS REQUIRED

 

A.     International Class 3

 

The wording “Toilet preparations; preparations for the care of the skin, scalp and the body; preparations for toning the body,” “creams, milks, lotions, gels and powders for the face, the body and the hands; sun care preparations; make-up preparations,” and “preparations for the hair” in the identification of Class 3 goods is indefinite and must be clarified because it could refer to goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The applicant must specify the generic names of the goods and also clarify that the skincare preparations, creams, milks, lotions, gels, and powders, and sun care preparations are non-medicated.  Please see the suggested wording below.

 

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 §§1401.03(d), 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); see TMEP §§1402.07(a), 1904.02(c).

 

Therefore, any modification to this wording must identify goods in International Class 3, the classification specified in the application for these goods.

 

B.     International Class 4

 

The wording “tea lights” in the identification of Class 4 goods is indefinite and must be clarified to specify that the goods are “tea light candles.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Any modification to this wording must identify goods in International Class 4, the classification specified in the application for these goods.

 

C.     International Class 21

 

The wording “Glassware, porcelain and earthenware” in Class 21 must be clarified to further specify the function or purpose of the products.  The wording “perfume sprayers” and “perfume vaporizers” in the identification must be clarified to specify that the goods are sold empty.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Any modification to this wording must identify goods in International Class 21, the classification specified in the application for these goods.

 

D.     International Class 35

 

The services are acceptable as stated in this international class.

 

E.      International Class 44

 

The applicant must amend the wording “Services for the care of the skin, face, scalp and hair; beauty treatment services,” “spa information services,” “make-up services,” and “spa services” in Class 44 to further specify the nature or purpose of the services because it could refer to services in multiple international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The identification of Class 44 services is also indefinite because it includes the open-ended wording “including.”  See TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  Therefore, this wording should be deleted and replaced with “namely.” 

 

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

 

Any modification to this wording must identify services in International Class 44, the classification specified in the application for these services.

 

The following substitute wording is suggested, if accurate: 

 

International Class 3:             Toilet preparations, namely, hand soaps; preparations for the care of the skin, scalp and the body, namely, non-medicated moisturizing cleansers for skin, scalp, and body; preparations for toning the body, namely, toning lotion, for the face, body and hands; perfume, eau de cologne, toilet water; talcum powder; gels, foam and salts for the bath and the shower; toilet soaps; body deodorants; cosmetics; non-medicated creams, milks, lotions, gels and powders for the face, the body and the hands; sun care preparations, namely, non-medicated sun care lotions; makeup preparations, namely, facial foundation and facial powder; aftershaves; shaving foams and creams; preparations for the hair, namely, hair spray; shampoo; hair lacquers; hair colouring and hair decolourant preparations; permanent waving and curling preparations; essential oils for personal use; dentifrices; antiperspirants; deodorants for personal use.

 

International Class 4: Candles, tea light candles, votives; scented candles, scented tea light candles and scented votives’

  

International Class 21:  Beverage glassware, porcelain mugs and earthenware mugs; holders for hand wash and hand lotion; soap boxes, soap dispensers, soap holders, soap dishes; candlesticks, candle holders, tea light holders and votive holders; candelabra and candle extinguishers; perfume sprayers sold empty; perfume burners; perfume vaporizers sold empty; powder compacts; powder puffs; fitted vanity cases; containers for pot pourri; make up brushes; toothbrushes; hairbrushes; shaving brushes.

 

International Class 44:  Services for the care of the skin, face, scalp and hair, namely, beauty salon services; beauty treatment services, namely, cosmetic body care; hairdressing services; spa information services, namely, providing information about medical, hygienic and beauty care; beauty salons, hairdressing salons; beauticians, make-up services, namely, services of a make-up artist; manicuring services; spa services, namely, providing massage, facial and body treatment services, cosmetic body care services; facial and body beauty treatments and therapies; provision of sauna and whirl pool bath facilities; provision of steam room services and health facilities, namely, massage, health care, health farms; advisory, consultancy and information services relating to all the aforesaid.

 

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.

 

An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.  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 §§1401.03(d), 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); see TMEP §§1402.07(a), 1904.02(c). 

 

NAME OF A LIVING INDIVIDUAL – CONSENT REQUIRED

 

The applied-for mark contains the name “Molton Brown” and appears to identify a particular living individual; however, the application does not include this named party’s written consent to registration of the name as a trademark/service mark.  Written consent is required for registration of a mark containing a name, including a pseudonym, stage name or nickname, or signature, if the name or signature identifies a particular living individual.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).  Therefore, applicant must clarify whether this name/signature identifies a particular living individual and, if so, provide a written consent from this individual, as explained further below.  37 C.F.R. §2.61(b); TMEP §§813, 1206.04(a).   

 

If the name or signature in the mark does not identify a particular living individual, then applicant must submit a statement that the name “Molton Brown” does not identify a living individual.  TMEP §§813.01(b), 1206.05; see 37 C.F.R. §2.61(b).

 

If the name or signature in the mark does identify a particular living individual, then applicant must submit the following: 

 

(1)  A statement that the name “Molton Brown” identifies a living individual whose consent is of record.  If the name represents that of a pseudonym, stage name, or nickname, applicant must include a statement that the name “Molton Brown” identifies the {please specify pseudonym/stage name/nickname} of {specify actual name}, a living individual whose consent is of record; and

 

(2)  A written consent, personally signed by the individual whose name or signature appears in the mark, authorizing applicant to register the name, pseudonym, stage name, nickname, or signature as a trademark and/or service mark with the USPTO (e.g., “I consent to the use and registration by Molton Brown Ltd. of my name Molton Brown as a trademark and/or service mark with the USPTO”).

 

TMEP §§813, 813.01(a), 1206.04(a); see 37 C.F.R. §2.61(b).

 

Failure to respond to this inquiry is a sufficient basis for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

ASSISTANCE

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

SEARCH RESULTS

 

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).

 

RESPONSE TO OFFICE ACTION

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

 

/Tina L. Snapp/

 

Tina L. Snapp

Examining Attorney

Law Office 116

571-272-9224

(tina.snapp@uspto.gov for informal e-mails only)

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 12/18/2012 FOR U.S. APPLICATION SERIAL NO. 85704288

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 12/18/2012 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  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

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

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.