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: 5/9/2014

 

 

THIS IS A FINAL ACTION.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 14, 2014.

 

In a previous Office action dated October 15, 2013, applicant was required to satisfy the following requirements:  amend the identification of goods, amend the classification of goods, and disclaim descriptive wording in the mark.

 

Based on applicant’s response, the trademark examining attorney withdraws the disclaimer requirement.  See TMEP §§713.02, 714.04.

 

Further, the trademark examining attorney maintains and now makes FINAL the requirements in the summary of issues below.  See 37 C.F.R. §2.64(a); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Classification of goods.
• Identification of goods.

 

CLASSIFICATION OF GOODS

In the previous Office action, applicant was required to classify the goods in the application correctly.  In its response, applicant classified (1) “anti-cavity fluoride mouth rinses,” (2) “incontinence sheets” in Class 5; (3) “foot brushes” in Class 8; (4) “thermometers for … medical use” in Class 9; (5) “bath chairs” in Class 10; (6) “dental tape” in Class 3; and (7) “cotton balls” in Class 3; however, the proper classifications are International Classes (1) 3, (2) 10, (3) 21, (4) 10, (5) 20, (6) 21 and (7) 21 respectively.  Therefore, applicant must either and reclassify these goods in the proper international class or delete the wordings “anti-cavity fluoride mouth rinses,” “incontinence sheets,” “foot brushes,” “thermometers for … medical use,” “bath chairs [adapted for use by the physically disabled],” “dental tape” and/or “cotton balls” from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant must adopt the appropriate international classification number for the goods and/or services identified in the application.  The United States follows the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization, to classify goods and services.  37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).

 

Based on the above discussion, the requirement for correct classification of goods is therefore maintained and made FINAL.

 

IDENTIFICATION OF GOODS

In the previous Office action, applicant was required to provide an acceptable identification of goods.  The following wordings in applicant’s proposed identification amendment are still unacceptable because as written they are vague, confusing and/or overbroad: “a full line of oral hygiene products, including, cleaning and/or whitening preparations for teeth”; “whitening rinses”; “breath sprays”; “whitening strips”; “whitening pens”; “whitening gel”; “whitening trays and kits”; “dissolvable breath strips”; “denture products, including, denture tablets, adhesive cream, cleaners”; “shaving care products, including, after-shave lotions”; “a full line of hair care products, including, shampoos, conditioners, hair sprays, detanglers, hair styling gels, hair tonic, dry shampoo, hair color”; “skin lotions, including, face and body, cocoa butter, aloe vera, baby, vitamin-E, cold cream, eye cream, eye serums, anti-wrinkle creams, healing, stretch mark”; “skin soaps for personal use, including, antibacterial, bath, deodorant, hand, perfumed, body care, liquid, baby, and bar soaps”; “powders, including, foot, bath, baby, cornstarch; bath products, including, bath treatments, oils, baby, bubble, wash, beads and salts”; “personal care products, including, antiperspirants”; “essentials oils for personal use, including, baby, muscle massage, and skin”; “cosmetic preparations, including, cotton balls, cotton cosmetic swabs, cosmetic pads made of cotton”; “exfoliants, including, pumice stones, non-medicated lip balm”; “cosmetic sun-protecting preparations, including, sunscreen sprays, sunscreen lotions”; “remover and wax strips for removing body hair, wax”; “hair … wash” “diaper rash ointments”; “antibacterial alcohol hand/skin sanitizer”; “medicated pads”; “diaper rash ointment”; “preparation for the relief of pain, including, sprays and lotions”; “a full line of medicines, remedies and preparations, including, antitussive-cold preparations, headache, allergy, analgesics, cold tablets, cough suppressants, cough syrups and drops, throat sprays, medicinal creams and ointments, decongestants, antihistamines, expectorants, ibuprofen, acetaminophen, and combinations thereof, sinus tablets, naproxen sodium, bismuth subsalicylate, pain relief medications, throat lozenges; medicated preparation for teething pain”; “nasal products, including, strips and inhalers”; “eye products, including, patches, drops, solutions and washes”; “diagnostic kits, including, urinary tract infections, pregnancy testing, ovulation testing for home use”; “smoking cessation preparations, including, nicotine replacement products as an alternative to smoking tobacco, including, lozenges, nicotine gum, transdermal patches containing nicotine”; “bracelets for medical purposes”; “alcohol wipes for medicinal purposes”; “dietary aids, including , a lactase enzyme used to reduce or remove the lactose in milk”; “mineral oil”; “liquid preparation of magnesia”; “dietary fiber to aid in digestion”; “a full line of non-medicated feminine care and hygiene products”; “bandages, dressing”; “tape for medical purposes, including, adhesive, cloth and paper”; “burn relief medications, including, sprays, and pads; scar treatments, including, gels”; “foot treatments, including, athlete's foot preparations, corn cushions, pads, moleskin, toe spacers, lamb's wool padding, oral hygiene products, including, medicated toothpaste, oral anesthetics, oral antiseptics”; “a full line of incontinence products, including, disposable diapers for incontinence, incontinence garments, incontinence pads, incontinence sheets, disposable wipes not impregnated with chemicals or compounds, medicated pre-moistened wipes”; “foot care implements, including, nail clippers, callous removers and shavers, foot brushes, foot files”; “disposable … blades”; “eye care accessories, including, lens case, batteries”; “vaporizers and humidifiers”; “medical apparatus, including ear wash device in the nature of a container to be filled with appropriate fluid for user for flushing ear was from ear”; “mouth guards”; “ear plugs”; “face masks”; “health monitoring devices, including pulse oximeters”; “folding walkers”; “canes”; “bath safety products adapted for use by the physically disabled, including, bath chairs, toilet seat risers”; “dental instruments, including picks, scalers and mirrors”; “pill and tablet … splitters”; “droppers”; “fobs”; “medical apparatus, including, electric heating devices for curative treatment”; “splints, including, finger”; “slings, including, arm”; “pain relief wraps for therapeutic purposes”; “oral hygiene devices, including toothbrushes, toothbrush heads, dental floss, flossers, brush picks and dental care kits comprising toothbrushes and toothpaste”; “sheet protectors”; and “foot care implements, including, inserts, cushions, insoles, toe protectors and separators.”  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

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).  If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1401.05(d), 1402.03(a).

 

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).  If applicant uses indefinite words and phrases such as “such as,” “including,” “and like goods” or “not limited to,” such wording must be followed by “namely,” and a list of the specific goods identified by their common commercial or generic names.  See id.

 

The identification of goods in International Class 10 includes a duplicate entry of the wording “chemically activated hot and cold gel packs for medical purposes.”  Applicant may either (1) modify one of these two identical descriptions of goods such that it will no longer be duplicative, or (2) delete one entry.  See TMEP §707.02.  However, if applicant modifies the goods and/or services, applicant may do so only to clarify or limit them; 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., 1402.07 et seq.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, proper punctuation in identifications of goods and services is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Generally, commas should be used (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely.”  TMEP §1402.01(a).  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class.  Id.

 

For example, the identification of goods “cleaners, namely, glass cleaners, deodorizers for pets, cosmetics” is ambiguous because “cosmetics” and “deodorizers for pets” are not “cleaners,” and thus are not within this category of goods even though they are all in the same international class.  Id.  However, by replacing the commas with semicolons after “glass cleaners” and “deodorizers for pets,” this identification would become acceptable:  “cleaners, namely, glass cleaners; deodorizers for pets; cosmetics.”  Id.

 

Applicant may adopt the following identification, if accurate: 

 

A full line of oral hygiene products, namely, tooth cleaning and tooth whitening preparations, toothpastes, breath freshening sprays, tooth whitening preparations in the form of rinses, tooth whitening preparations contained in a pen-shaped container, tooth whitening toothpaste, tooth polishes, breath mints for use as a breath freshener; breath freshening confectionery in the forms of a chewing gum; tooth whitening strips impregnated with teeth whitening preparations, tooth whitening gels, and teeth whitening kits; non-medicated mouth wash and rinses; anti-cavity fluoride mouth rinses, dissolvable breath freshening strips; denture products, namely, denture cleaners in the form of tablets, and denture cleaning preparations in the form of a cream; shaving care products, namely, after-shave lotions; after-shave balm; a full line of hair care products, namely, shampoos, conditioners, hair sprays, hair-detangling lotions, hair styling gels, hair tonics, dry shampoos, hair color; skin lotions for the face and body; body lotions and skin lotions containing cocoa butter and aloe vera for skin care and cosmetic purposes; skin lotions containing vitamin E; baby skin lotions; cold creams, eye creams, beauty serums for the eyes, anti-wrinkle creams; face and neck creams; skin soaps for personal use, namely, antibacterial, bath, deodorant, hand, perfumed, body care, liquid, baby, and bar soaps; powders, namely, foot, bath, baby, and talcum powder containing corn starch; bath products, namely, bath oils, baby bubble bath, bubble bath, body wash for use in baths, bath beads and bath salts; personal care products, namely, antiperspirants and deodorants for body care; disposable wipes impregnated with cleansing chemicals or compounds for personal hygiene, baby and household use; essentials oils for personal use, namely, baby, muscle massage, and skin; cosmetic preparations, namely, make-up remover, cotton balls for cosmetic purposes, all purpose cotton swabs for cosmetic purposes, cotton for cosmetic purposes in the shapes of rounds and pads; make-up remover; foam cleaning preparations; cosmetic exfoliants, namely, pumice stones for personal use, exfoliating body scrubs; non-medicated lip balms; cosmetic sun protection products, namely, cosmetic sunscreen body sprays, sunscreen lotions; nail polish remover; petroleum jelly for cosmetic purposes; facial cleansers and scrubs; hair bleach; wax strips for removing body hair, wax for removing body hair; hair-washing powder; body wash; non-medicated diaper rash ointments; anti-cavity fluoride mouth rinses in Class 3

 

Antibacterial alcohol skin sanitizer gels; all-purpose cotton swabs; cold sore and canker treatment preparations; medicated foot powders; antiseptic sprays and lotions; hemorrhoidal gels, suppositories, sprays, creams and ointments; medicated pads for hemorrhoid relief; bacitracin ointments; hydrocortisone creams; calamine lotions; medicated diaper rash ointments; preparation for the relief of pain, namely, pain relief medications in the forms of sprays and lotions; antibiotic creams and ointments; petroleum jelly for medical purposes; natural sleep aid preparations; a full line of medicines, remedies and preparations, namely, pharmaceutical antitussive-cold preparations, preparations for treating colds, headache treatment preparations, allergy relief medication, analgesics, preparations in tablet forms for treating colds, cough treatment preparations in the nature of cough suppressants, cough syrups and drops, medicated throat sprays, medicinal creams and ointments for the treatment of colds, flu, headache and allergy symptoms; decongestants, antihistamines, expectorants, ibuprofen for use as an oral analgesic, acetaminophen, and combinations of aspirin and caffeine, concentrated saline tablets for sinus discomfort, pharmaceutical preparations in the nature of naproxen sodium for medical purposes, bismuth subsalicylate preparations for medical purposes, pain relief medications, throat lozenges; medicated preparation for teething pain; antacids and acid reducers consisting primarily of antacids; anti-diarrheal and anti-gas medications; aspirin; anti-inflammatories, baby diapers and disposable training pants; nursing pads; homeopathic supplements; herbal supplements; nasal products, namely, decongestant nasal strips and inhalers filled with Levmetamfetamine, vitamins, mineral supplements; nutritional, dietary and food supplements; ear drops; eye products, namely, eye patches for medical purposes, eye lubricating drops, irrigating solutions for eye use and eye washes, eyeglass lens cleaning solutions, eyeglass lens cleaning kits consisting primarily of eyeglass lens leaning solutions; contact lens solutions and contact lens cleaning preparations; home-use diagnostic kits consisting primarily of test strips, test sticks and digital test sticks that test for the presence of urinary tract infections, pregnancy, and ovulation; personal lubricants; first aid kits; lice treatment preparations; smoking cessation preparations in the forms of lozenges and nicotine gum; transdermal patches featuring smoking cessation preparations that contain nicotine; identification bracelets for medical purposes; caffeine preparations for stimulative use; acne treatment medication; infant formula; electrolyte drinks for medical purposes; wart removing preparations; test strips for measuring blood glucose levels; glucose dietary supplements; medicinal hair growth treatments; medicated shampoo; disposable wipes impregnated with alcohol for medicinal purposes; iodine; hydrogen peroxide for medical use; witch hazel, epsom salts, saline solution for medical purposes, suppositories; dietary aids, namely, lactase enzyme food supplements used to reduce or remove the lactose in milk; laxatives; medicated oils containing minerals; dietary supplements in the nature of liquid magnesia for nutritional purposes; stool softener; dietary fiber to aid digestion; motion sickness treatment preparations; a full line of non-medicated feminine care and hygiene products, namely, __ [indicate common commercial name(s) of goods, e.g., tampons, panty liners, vaginal moisturizers, vaginal washes]; diuretics; bandages for dressings; gauze; adhesive tapes for medical purposes; burn relief medications, namely, __ [indicate common commercial name(s) of goods, e.g., burn dressings]; foot treatments, namely, athlete’s foot preparations, corn rings for cushioning the feet, corn pads, moleskin for medical purposes, orthopedic padding consisting primarily of lamb’s wool; oral hygiene products, namely, medicated toothpaste, oral anesthetics, oral antiseptics; anti-cavity fluoride mouth rinses; a full line of incontinence products, namely, disposable diapers for incontinence, incontinence garments, incontinence pads, disposable sanitizing wipes not impregnated with chemicals or compounds, medicated pre-moistened wipes; enema preparations in Class 5

 

Metal identification bracelets for medical purposes; key fobs of common metal in Class 6

 

Pedicure implements, namely, nail clippers, callous removers, electric callous shavers and foot files; nail files; disposable razors and razor blades in Class 8

 

Thermometers for domestic use; food scales; body scales; eye care accessories, namely, contact lens case; batteries in Class 9

 

Disposable baby bottle liners; vaporizers and humidifiers for medical purposes; medical apparatus, namely, an ear wash device in the nature of a container to be filled with appropriate fluid for user for flushing ear wax from ear, foldable invalid walkers; mouth guards for medical purposes; ear plugs for medical purposes; face masks for use by health care providers; latex-free gloves for medical purposes; lancets; health monitoring devices, namely, pulse oximeters; rollators; canes for medical purposes and crutches; dental instruments, namely, dental picks, scalers and mirrors; pill and tablet cutters, and crushers; pill splitters for dispensing unit doses of medicine; droppers for administering medication, sold empty; bottles, spoons and cups for administering medication, sold empty; chemically activated hot and cold gel packs for medical purposes; medical apparatus, namely, electric heating devices for curative treatment; finger splints; arm slings for medical use; lice comb; therapeutic hot and cold compression wraps for the relief of pain; silicone gel sheeting for the treatment of scars; incontinence sheets; thermometers for medical use  in Class 10

 

Toilet seat risers in the nature of toilet seat adaptors as bath safety products specially adapted for use by the physically disabled; humidifiers in Class 11

 

Watch fobs in Class 14

 

Foam toe separators for use in pedicures; bath chairs as bath safety products adapted for use by the physically disabled; non-metal identification bracelets for medical purposes; foot care implements in the nature of foot rests; foot care implements in the nature of foam toe separators for use in pedicures in Class 20

 

Oral hygiene devices, namely, toothbrushes, toothbrush heads, dental floss, flossers, dental floss picks featuring a brush, and dental care kits consisting primarily of toothbrushes and toothpaste, personal dispensers for pills or capsules for domestic use; cotton balls; foot brushes; dental tape; key fobs not of metal in Class 21

 

Sheet protectors, namely, bed covers for use on bed sheets in International Class 24

 

Foot care implements, namely, heel inserts and insoles; cotton gloves in Class 25

 

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). 

 

The purpose of the identification of goods and/or services is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods and/or services.  In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)).  If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person.  See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.

 

An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services.  TMEP §1402.01.  “[T]echnical, high-sounding verbiage” should be avoided.  Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.

 

Applicant may amend the identification to list only those items that are within the scope of the goods 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.  

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04. 

 

Based on the above discussion, the requirement for an acceptable identification is therefore maintained and made FINAL.

 

COMBINED APPLICATION REQUIREMENTS

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on use in commerce:

 

(1)       LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods/services by international class;

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”); and

 

(3)       SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each international class of goods and/or services, applicant must also submit the following:

 

(a)       DATES OF USE:  Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;

 

(b)       SPECIMEN:  One specimen showing the mark in use in commerce for each international class of goods and/or services.  Applicant must have used the specimen in commerce at least as early as the filing date of the application.  If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.;

 

(c)       STATEMENT:  The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”; and

 

(d)       VERIFICATION:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

RESPONSE TO PARTIAL REQUIREMENT

Applicant must respond within six months of the date of issuance of this final Office action or the following goods to which the final requirements apply will be deleted from the application by Examiner’s Amendment:  “anti-cavity fluoride mouth rinses”; “incontinence sheets”; “foot brushes”; “thermometers for … medical use”; “bath chairs”; “dental tape”; “cotton balls”; “a full line of oral hygiene products, including, cleaning and/or whitening preparations for teeth”; “whitening rinses”; “breath sprays”; “whitening strips”; “whitening pens”; “whitening gel”; “whitening trays and kits”; “dissolvable breath strips”; “denture products, including, denture tablets, adhesive cream, cleaners”; “shaving care products, including, after-shave lotions”; “a full line of hair care products, including, shampoos, conditioners, hair sprays, detanglers, hair styling gels, hair tonic, dry shampoo, hair color”; “skin lotions, including, face and body, cocoa butter, aloe vera, baby, vitamin-E, cold cream, eye cream, eye serums, anti-wrinkle creams, healing, stretch mark”; “skin soaps for personal use, including, antibacterial, bath, deodorant, hand, perfumed, body care, liquid, baby, and bar soaps”; “powders, including, foot, bath, baby, cornstarch; bath products, including, bath treatments, oils, baby, bubble, wash, beads and salts”; “personal care products, including, antiperspirants”; “essentials oils for personal use, including, baby, muscle massage, and skin”; “cosmetic preparations, including, cotton balls, cotton cosmetic swabs, cosmetic pads made of cotton”; “exfoliants, including, pumice stones, non-medicated lip balm”; “cosmetic sun-protecting preparations, including, sunscreen sprays, sunscreen lotions”; “remover and wax strips for removing body hair, wax”; “hair … wash” “diaper rash ointments”; “antibacterial alcohol hand/skin sanitizer”; “medicated pads”; “diaper rash ointment”; “preparation for the relief of pain, including, sprays and lotions”; “a full line of medicines, remedies and preparations, including, antitussive-cold preparations, headache, allergy, analgesics, cold tablets, cough suppressants, cough syrups and drops, throat sprays, medicinal creams and ointments, decongestants, antihistamines, expectorants, ibuprofen, acetaminophen, and combinations thereof, sinus tablets, naproxen sodium, bismuth subsalicylate, pain relief medications, throat lozenges; medicated preparation for teething pain”; “nasal products, including, strips and inhalers”; “eye products, including, patches, drops, solutions and washes”; “diagnostic kits, including, urinary tract infections, pregnancy testing, ovulation testing for home use”; “smoking cessation preparations, including, nicotine replacement products as an alternative to smoking tobacco, including, lozenges, nicotine gum, transdermal patches containing nicotine”; “bracelets for medical purposes”; “alcohol wipes for medicinal purposes”; “dietary aids, including , a lactase enzyme used to reduce or remove the lactose in milk”; “mineral oil”; “liquid preparation of magnesia”; “dietary fiber to aid in digestion”; “a full line of non-medicated feminine care and hygiene products”; “bandages, dressing”; “tape for medical purposes, including, adhesive, cloth and paper”; “burn relief medications, including, sprays, and pads; scar treatments, including, gels”; “foot treatments, including, athlete's foot preparations, corn cushions, pads, moleskin, toe spacers, lamb's wool padding, oral hygiene products, including, medicated toothpaste, oral anesthetics, oral antiseptics”; “a full line of incontinence products, including, disposable diapers for incontinence, incontinence garments, incontinence pads, incontinence sheets, disposable wipes not impregnated with chemicals or compounds, medicated pre-moistened wipes”; “foot care implements, including, nail clippers, callous removers and shavers, foot brushes, foot files”; “disposable … blades”; “eye care accessories, including, lens case, batteries”; “vaporizers and humidifiers”; “medical apparatus, including ear wash device in the nature of a container to be filled with appropriate fluid for user for flushing ear was from ear”; “mouth guards”; “ear plugs”; “face masks”; “health monitoring devices, including pulse oximeters”; “folding walkers”; “canes”; “bath safety products adapted for use by the physically disabled, including, bath chairs, toilet seat risers”; “dental instruments, including picks, scalers and mirrors”; “pill and tablet … splitters”; “droppers”; “fobs”; “medical apparatus, including, electric heating devices for curative treatment”; “splints, including, finger”; “slings, including, arm”; “pain relief wraps for therapeutic purposes”; “oral hygiene devices, including toothbrushes, toothbrush heads, dental floss, flossers, brush picks and dental care kits comprising toothbrushes and toothpaste”; “sheet protectors”; “foot care implements, including, inserts, cushions, insoles, toe protectors and separators” and the duplicate entry of “chemically activated hot and cold gel packs for medical purposes.”  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods:

 

Tooth whitening strips impregnated with teeth whitening preparations, tooth whitening gels, and teeth whitening kits; non-medicated mouth wash and rinses; anti-cavity fluoride mouth rinses, dissolvable breath freshening strips; after-shave balm; skin lotions for the face and body; skin lotions containing vitamin E; baby skin lotions; cold creams, eye creams, beauty serums for the eyes, anti-wrinkle creams; face and neck creams; disposable wipes impregnated with cleansing chemicals or compounds for personal hygiene, baby and household use; make-up remover; foam cleaning preparations; non-medicated lip balms; nail polish remover; petroleum jelly for cosmetic purposes; facial cleansers and scrubs; hair bleach; wax strips for removing body hair; body wash in Class 3

 

All-purpose cotton swabs; cold sore and canker treatment preparations; medicated foot powders; antiseptic sprays and lotions; bacitracin ointments; hydrocortisone creams; calamine lotions; antibiotic creams and ointments; petroleum jelly for medical purposes; natural sleep aid preparations; decongestants, antihistamines, expectorants, ibuprofen for use as an oral analgesic, acetaminophen, and combinations of aspirin and caffeine, concentrated saline tablets for sinus discomfort, pharmaceutical preparations in the nature of naproxen sodium for medical purposes, bismuth subsalicylate preparations for medical purposes, pain relief medications, throat lozenges; medicated preparation for teething pain; antacids and acid reducers consisting primarily of antacids; anti-diarrheal and anti-gas medications; aspirin; anti-inflammatories, baby diapers and disposable training pants; nursing pads; homeopathic supplements; herbal supplements; ear drops; contact lens solutions and contact lens cleaning preparations; personal lubricants; first aid kits; lice treatment preparations; caffeine preparations for stimulative use; acne treatment medication; infant formula; electrolyte drinks for medical purposes; wart removing preparations; test strips for measuring blood glucose levels; glucose dietary supplements; medicinal hair growth treatments; medicated shampoo; iodine; witch hazel, epsom salts, saline solution for medical purposes, suppositories; laxatives; motion sickness treatment preparations; diuretics; gauze; anti-cavity fluoride mouth rinses; medicated pre-moistened wipes; enema preparations in Class 5

 

Nail files; disposable razors in Class 8

 

Thermometers for domestic use; food scales; body scales; batteries in Class 9

 

Disposable baby bottle liners; latex-free gloves for medical purposes; lancets; crutches; pill and tablet cutters, and crushers; bottles, spoons and cups for administering medication, sold empty; chemically activated hot and cold gel packs for medical purposes; lice comb; silicone gel sheeting for the treatment of scars in Class 10

 

Personal dispensers for pills or capsules for domestic use in Class 21

 

Cotton gloves in Class 25

 

Applicant may respond by providing one or both of the following:

 

(1)  A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

 

(2)  An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

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.

 

 

 

/Dawn Han/

Examining Attorney

Law Office 107

(571) 272-9432

dawn.han@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/9/2014 FOR U.S. APPLICATION SERIAL NO. 86025887

 

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 5/9/2014 (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.