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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 5/12/2017

 

 

THIS IS A FINAL ACTION.

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on May 3, 2017.

 

In a previous Office action dated December 15, 2016, the trademark examining attorney refused registration of the applied-for mark based on the following: 

 

1. Section 2(d) Refusal – Class 18 Only
2. Prior Pending Applications
3. Identification of Goods
4. Specimen – No Identified Goods
5. Representative Specimens Required
6. Mark Description and Color Claim

 

Applicant responded by deleting Class 18, amending its identification of goods, submitting substitute specimens, and amending the mark description and color claim.

 

Applicant’s response overcomes items (1) and (2) on the preceding list.  See TMEP §§713.02, 714.04.

 

The trademark examining attorney maintains and now makes FINAL the requirement for an acceptable identification of goods, the specimen refusal, and the requirement for representative specimens.  See 37 C.F.R. §2.64(a); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Identification of Goods
• Specimens
• Representative Specimens
• Ethical Advisory

 

 

IDENTIFICATION OF GOODS

 

The identification of goods includes duplicate entries of the wording “bracelets” and clarification is required.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(a).  Applicant may either (1) modify one of these two identical descriptions of goods and/or services such that it will no longer be duplicative, or (2) delete one entry.  See TMEP §§1402.01, 1402.01(a).  If modifying one of the duplicate identifications, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

 

Applicant may adopt the following identification, if accurate:

 

Class 3:           Cosmetic cotton wool; Cosmetic creams; Cosmetic creams for skin care; Cosmetic hand creams; Cosmetic masks; Cosmetic massage creams; Cosmetic milks; Cosmetic nourishing creams; Cosmetic oils; Cosmetic oils for the epidermis; Cosmetic preparations; Cosmetic preparations against sunburn; Cosmetic preparations for bath and shower; Cosmetic preparations for baths; Cosmetic preparations for body care; Cosmetic preparations for eyelashes; Cosmetic preparations for nail drying; Cosmetic preparations for protecting the skin from the sun's rays; Cosmetic preparations for removing gel nails, acrylic nails, and nail polish; Cosmetic preparations for skin care; Cosmetic preparations for skin renewal; Cosmetic preparations for slimming purposes; Cosmetic preparations for the care of mouth and teeth; Cosmetic preparations for the hair and scalp; Cosmetic preparations, namely, firming creams; Cosmetic preparations, namely, firming lotions; Cosmetic preparations, namely, skin balsams; Cosmetic products in the form of aerosols for skin care; Cosmetic products in the form of aerosols for skincare; Cosmetic rouges; Cosmetic skin fresheners; Cosmetic soaps; Cosmetic sun milk lotions; Cosmetic sun oils; Cosmetic sun-tanning preparations; Cosmetic sunscreen preparations; Cosmetic suntan preparations; Cosmetic tanning preparations; Cosmetic white face powder; Cosmetics; Cosmetics and cosmetic preparations; Cosmetics and make-up; Cosmetics in general, including perfumes; Cosmetics in the form of milks, lotions and emulsions; Cosmetics sold as an integral component of non-medicated skincare preparations; Cosmetics, namely, compacts; Cosmetics, namely, lip primer; Cosmetics, namely, lip repairers; Adhesives for cosmetic purposes; Adhesives for cosmetic use; After-sun gels; After-sun milks; After-sun oils; Almond milk for cosmetic purposes; Aloe vera gel for cosmetic purposes; Aloe vera preparations for cosmetic purposes; Anti-aging moisturizers used as cosmetics; Astringents for cosmetic purposes; Bath oils for cosmetic purposes; Bath powder; Bleaching preparations for cosmetic purposes; Body and beauty care cosmetics; Castor oil for cosmetic purposes; Cleaner for cosmetic brushes; Cleansing milk for cosmetic purposes; Cocoa butter for cosmetic purposes; Coconut oil for cosmetic purposes; Colognes, perfumes and cosmetics; Coloring preparations for cosmetic purposes; Concealers; Cotton balls for cosmetic purposes; Cotton buds for cosmetic purposes; Cotton for cosmetic purposes; Cotton puffs for cosmetic purposes; Cotton swabs for cosmetic purposes; Cotton wool for cosmetic purposes; Decorative transfers and skin jewels for cosmetic purposes; Eye compresses for cosmetic purposes; Eyebrow cosmetics; Face creams for cosmetic use; Flower essences for cosmetic purposes; Gauze for cosmetic purposes; Gels for cosmetic purposes; Gift baskets containing non-medicated bath preparations and cosmetic preparations; Glitter for cosmetic purposes; Grape seed oil for cosmetic use; Hair stick pomades; Henna for cosmetic purposes; Impregnated cleaning pads impregnated with cosmetics; Lip neutralizers; Lip stains; Lotions for cosmetic purposes; Mask pack for cosmetic purposes; Milk for cosmetic purposes; Mineral powder for use in cosmetic body wrap applications; Nail paint; Nail primer; Nail varnish for cosmetic purposes; Non-medicated hair treatment preparations for cosmetic purposes; Nutritional oils for cosmetic purposes; Oils for cosmetic purposes; Pencils for cosmetic purposes; Petroleum jelly for cosmetic purposes; Plant and herb extracts sold as components of cosmetics; Pore tightening mask packs used as cosmetics; Private label cosmetics; Retinol cream for cosmetic purposes; Rose oil for cosmetic purposes; Self-tanning preparations; Shaving stones; Skin and body topical lotions, creams and oils for cosmetic use; Skin fresheners; Skin moisturizers used as cosmetics; Suntan oils for cosmetic purposes; Tanning and after-sun milks, gels and oils; Tanning gels; Tanning milks; Tanning oils; Teeth whitening strips impregnated with teeth whitening preparations; Tissues impregnated with cosmetic lotions; Toners; Topical skin sprays for cosmetic purposes; Wrinkle-minimizing cosmetic preparations for topical facial use

 

Class 14:         Amulets; Bangle bracelets; Bangles; Beads for making jewellery; Bib necklaces; Body jewelry; Bracelets; Bracelets; Broaches being jewelry; Brooches; Cameos; Charms; Children's jewelry; Choker necklaces; Costume jewelry; Drop earrings; Earrings; Fitted jewelry pouches; Gemstone jewelry; Hair jewelry in the nature of jewelry for use in the hair; Hoop earrings; Imitation jewellery; Inexpensive non-jewelry watches; Jewel chains; Jewellery; Jewellery cases; Jewellery chains; Jewellery, clocks and watches; Jewellery, including imitation jewellery and plastic jewellery; Jewelry; Jewelry and imitation jewelry; Jewelry brooches; Jewelry chains; Jewelry for attachment to clothing; Jewelry for the head; Jewelry in the nature of armbands; Jewelry made in whole or significant part of rhinestone; Jewelry organizer cases; Jewelry ornaments; Jewelry stickpins; Jewelry, namely, amulets; Jewelry, namely, anklets; Jewelry, namely, bracelets, wristbands and necklaces that also provides notification to the wearer of a pending medical related task; Jewelry, namely, stone pendants; Jewels; Key chains as jewelry; Lapel pins; Lockets; Memorial jewelry; Necklace and earring combinations that can be worn separately or as one piece; Necklaces; Paste jewellery; Paste jewelry; Pierced earrings; Pins being jewelry; Precious and semi-precious crystal stones and beads for use in jewelry; Precious and semi-precious gems; Precious gemstones; Real and imitation jewellery; Rhinestones for making jewelry; Rings made in whole or significant part of rhinestone; Rubber or silicone wristbands in the nature of a bracelet; Synthetic precious stones; Tie bars; Watch bracelets; Women's jewelry

 

Stylized text indicates changes.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  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 or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

 

SPECIMENS

 

Registration is refused because the specimen does not show the applied-for mark in the drawing in use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i).  Specifically, specimen pages 1 and 3 display with white color, not silver and gray as claimed in the mark. Further specimen page 2 depicts the mark without the wording EXO under the hexagon design. Finally, specimen page 4 displays the mark without the hexagon logo and in solid black with different stylization to the text. None of the four specimens display the mark as applied for – with a gray and silver hexagon appearing above the wording EXO.

 

The drawing shows the mark sought to be registered, and must be a substantially exact representation of the mark as used on or in connection with the goods and/or services, as shown by the specimen.  37 C.F.R. §2.51(a); TMEP §807.12(a).  Because the mark in the drawing is not a substantially exact representation of the mark on the specimen, applicant has failed to provide the required evidence of use of the applied-for mark in commerce on or in connection with applicant’s goods and/or services.  See TMEP §807.12(a). 

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)    Submit a new drawing of the mark that agrees with the mark on the specimen and, if appropriate, an amendment to the color claim and/or mark description that conforms to the new drawing. 

a.      Notably, this option can only be used to overcome the specimen refusal in Class 3. The differences between the mark and the specimen for Class 14 are material, and a drawing amendment will not overcome the specimen refusal as to Class 14.

 

(2)    Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark or a substantially exact representation of the mark in the drawing in actual use in commerce for the goods and/or services identified in the application.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/J3.jsp.

 

 

REPRESENTATIVE SPECIMENS REQUIRED

 

While applicant submitted additional specimens, none of them show the applied-for mark, and the intended depiction of the mark only appears on a total of three different goods despite the fact that applicant has applied for a multitude of goods.  Note that if an identification is so broad that it encompasses a wide range of products and services, then the applicant must submit evidence that it actually uses the mark on a wide range of products and services to obtain registration. See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976); 37 CFR 2.61(b); TMEP §§904.01(a) and 1402.03.

 

Applicant must submit a proper specimen for each of the following groups of goods:

 

1. Cosmetic products in the form of aerosols for skincare; Grape seed oil for cosmetic use
2. Cleaner for cosmetic brushes; Plant and herb extracts sold as components of cosmetics
3. Cotton wool for cosmetic purposes; Shaving stones
4. Mineral powder for use in cosmetic body wrap applications; Adhesives for cosmetic purposes
5. Bangle bracelets; Bib necklaces
6. Fitted jewelry pouches; Memorial jewelry
7. Paste jewelry; Synthetic precious stones
8. Inexpensive non-jewelry watches; Watch bracelets;
9. Jewelry, namely, bracelets, wristbands and necklaces that also provides notification to the wearer of a pending medical related task 

 

These specimens need not be supported by a declaration.

 

Please note that applicant should delete all identifications of goods pertaining to goods that are not yet in use in commerce.

 

 

DECLARATION AND SUBMISSION – ETHICAL ADVISORY

 

Applicant is reminded that any party who presents a document to the USPTO is subject to 37 C.F.R. §11.18(b).  Thus, an attorney, applicant, or other party who signs or submits a document in connection with a trademark application is certifying that:

 

(1)       All statements made in the document of the party’s own knowledge are true, all statements made on information and belief are believed to be true, and all statements made are made with the knowledge that, in any matter within the jurisdiction of the USPTO, any party who knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, is subject to the penalties under 18 U.S.C. §1001, including fines and imprisonment;

 

(2)       To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, the document is not being presented for any improper purpose;

 

(3)       All allegations or other factual contentions in the document have evidentiary support or are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

 

(4)       All denials of factual contentions in the document are warranted on the evidence or are reasonably based on a lack of information or belief.

 

See 37 C.F.R. §11.18(b); TMEP §§302, 611.01(a).

 

Violating 37 C.F.R. §11.18(b) may jeopardize the validity of an application and any resulting registration, and may lead the USPTO to impose sanctions and/or take other appropriate actions under 37 C.F.R. §11.18(c), which may include the following:  rejecting the relevant document or according it less probative value; referring the practitioner’s conduct to the USPTO’s Office of Enrollment and Discipline for possible disciplinary action; excluding the practitioner or other party from practicing before, or otherwise submitting documents to, the USPTO; and requiring a party to be represented by a qualified practitioner in any current or future trademark matters before the USPTO. 

 

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); 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.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/David Gearhart/

Examining Attorney

Law Office 112

(571) 272-3643

David.Gearhart@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 5/12/2017 FOR U.S. APPLICATION SERIAL NO. 87164398

 

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 5/12/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.