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: 6/30/2017

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).

 

SUMMARY OF ISSUES:

• Drawing and Description of Configuration Mark
• Disclaimer Required
• Identification of Goods
• Multiple-Class Application Requirements

 

DRAWING AND DESCRIPTION OF CONFIGURATION MARK

 

The drawing shows a two-dimensional image; however it is not clear from the record whether applicant is applying for (1) a two-dimensional design mark that is not trade dress; or (2) a three-dimensional mark that is trade dress for product design (i.e., the configuration or shape of the goods themselves), product packaging (i.e., the container in which the goods are sold), or a specific design feature of the product design or packaging.  Thus, applicant must clarify whether the applied-for mark is intended to be a two-dimensional design or a three-dimensional configuration mark.  See 37 C.F.R. §2.61(b); TMEP §1202.02(c)(i), (c)(ii).

 

If applicant is applying for a two-dimensional design mark, applicant must clarify so for the record, and may amend the mark description accordingly.  See 37 C.F.R. §2.61(b); TMEP §1202.02(c)(i), (c)(ii).

 

If applicant is applying for a three-dimensional configuration mark that is trade dress, applicant must amend the mark description to provide a clear and concise description of the mark that does the following:

 

(1) Indicates that the mark is a three-dimensional configuration of the product design or packaging, or of a specific design feature of the product design or packaging.

 

(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark.

 

(3) Specifies any elements which are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.

 

See 37 C.F.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 178 (TTAB 1983); TMEP §§807.08, 807.10, 1202.02(c)(ii). 

 

The following is suggested:

 

The mark consists of a three-dimensional configuration comprising the design of a jar whose lower half features alternating wave patters which taper toward the bottom of the container.  The lid contains an outer circle forming a laced flower design, inside which an inner circle contains an interlaced design beneath which the mark contains the word “AMOUAGE” in Arabic.

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the following elements of the applied-for product packaging mark because they comprise nondistinctive matter that does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others:  the round shape of the lid.  See 15 U.S.C. §§1051-1052, 1056(a), 1127; TMEP §1202.02(b)(ii), (c)(i)(B), (c)(iii)(B). 

 

Determining whether product packaging trade dress is inherently distinctive involves the following factors:

 

(1)  Whether the applied-for mark is a “common” basic shape or design

 

(2)  Whether the applied-for mark is unique or unusual in the field in which it is used

 

(3)  Whether the applied-for mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods

 

(4)  Whether the applied-for mark is incapable of creating a commercial impression distinct from any accompanying words

 

In re Pacer Tech., 338 F.3d 1348, 1350, 67 USPQ2d 1629, 1631 (Fed. Cir. 2003) (citing Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977)); TMEP §1202.02(b)(ii).  Any one of these factors, by itself, may be determinative.  See In re Chippendales USA, Inc., 622 F.3d 1346, 1355, 96 USPQ2d 1681, 1687 (Fed. Cir. 2010).

 

The attached evidence from sellers of jars for cosmetics shows that this shape is used by others in the cosmetics field on containers.  Because consumers have been accustomed to seeing this shape used by others in the marketplace, the consumer will not perceive it as a trademark that identifies the source of only one individual’s goods.

 

An applicant may not claim exclusive rights to an unregistrable component of a mark, such as this nondistinctive matter, and therefore must provide a disclaimer of it.  See 15 U.S.C. §1056(a); TMEP §§1202.02(c)(iii), (c)(iii)(B), 1213.03(a), (b).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

Applicant must provide the disclaimer regardless of whether the remaining portions of the mark are determined to be registrable.  See TMEP §1202.02(c)(iii)(B).  If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Slokevage, 441 F.3d 957, 959, 962-63, 78 USPQ2d 1395, 1397, 1400 (Fed. Cir. 2006); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “the round shape of the lid” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).

 

IDENTIFICATION OF GOODS

 

IMPLEMENTATION OF THE ELEVENTH EDITION, VERSION 2017 OF THE NICE AGREEMENT:  Effective January 1, 2017, the Eleventh Edition, version 2017 of the Nice Agreement changed the classification of certain goods and services used in identifications.  See Nice Classification, 11th ed., version 2017 (“Nice 11-2017”); TMEP §1401.02(a).  Applications filed on or after January 1, 2017 must comply with the new edition.  See 37 C.F.R. §2.85(e)(1); TMEP §1401.09.  Applications filed prior to January 1, 2017 must comply with the edition of the Nice Agreement in effect as of the application filing date; however, applicants of such applications may voluntarily choose to comply with the new edition.  See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09.  If applicant chooses to comply with the new edition, the entire identification must comply with this edition.  See 37 C.F.R. §2.85(e)(2); TMEP §1401.09.  The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new edition as well as information for previous editions in notes to specific entries.  See TMEP §1402.04.

 

The wording “soaps; preparations for the care of hair and skin; powder; preparations for use in the bath and shower; deodorants” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “non-medicated soaps; hair care preparations; cosmetic preparations for skin care; baby powder; bath powder; body powder; face powder; non-medicated foot powder; cosmetic preparations for bath and shower; deodorants for body care; deodorants for human beings;  ” belonging in International Class 3; and “antibacterial soaps; medicated soaps; medicated hair care preparations; medicated skin care preparations; medicated body powder; medicated bath preparations;  carpet car deodorants; room deodorants;” belonging in International Class 5.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 3:

Non-medicated soaps; perfumery; perfumes; fragrances; essential oils; cosmetics; hair lotions; hair care preparations; cosmetic preparations for skin care; creams and lotions for the body and face; bath powder; cosmetic preparations for use in the bath and shower; deodorants for human beings

 

Applicant may amend the identification 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.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods that may belong in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods that may be classified in more than one class; however, applicant submitted a fee(s) sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

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.  

 

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. §§2.62(c), 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.

 

/Katherine DuBray/

Trademark Examining Attorney, Law Office 118

katherine.dubray@uspto.gov

(571) 272-4815

 

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 6/30/2017 FOR U.S. APPLICATION SERIAL NO. 87394211

 

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 6/30/2017 (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.